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 .
Status of the Claims
Claims 1-19 are pending and under current examination.
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 11, 12, and 14-19 are 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.
Claim 11 recites the limitation "the at least one active ingredient" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites “wherein the application includes”. The word “includes” renders the claim indefinite because it is unclear whether the subsequent language “a dose which is between 0.01 – 12 g/L of said extract” further limits the invention or is merely exemplary of a dose that would fall within the scope of the invention.
Claim 12 recites “a dose which is between 0.01 – 12 g/L of said extract” renders the claim indefinite because the term “dose” refers to an absolute amount of an active agent applied to a plant; however, the claim describes a concentration of extract rather than a total amount of extract that is applied. It is unclear whether the “per liter” refers to liters of the formulation in which the extract is contained before application or perhaps the volume of a pot containing the plant being treated, etc. For this reason the quantity of the requisite “dose” is unclear.
Claim 14 is indefinite because the claim is directed to a product, “A biostimulant”, but claim 14 depends from claim 1, which is directed to a method and recites that the biostimulant is applied to a plant, requiring method steps for using this product. Per MPEP 2173.05(p), a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite.
See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). In Katz, a claim directed to “A system with an interface means for providing automated voice messages…to certain of said individual callers, wherein said certain of said individual callers digitally enter data” was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. In re Katz, 639 F.3d at 1318 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited “an input means” and required a user to use the input means was found to be indefinite because it was unclear “whether infringement … occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means.”); < Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).
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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 14-19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Specifically, claim 14 fails to include all the limitations of the claim upon which it depends. Claim 14 is directed to a product; however, the claim depends from claim 1, which is directed to a method of applying the product. As the product itself cannot also be a step of applying the product, the claim fails to include all the limitations of the claim up on which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 improper dependency concerns outlined above.
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 14-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more.
The claims recite “a biostimulant implemented by the method according to claim 1, which comprises an extract obtained by liquid extraction, aqueous extraction or solvent extraction, from at least one part of a Rocket plant”.
The examiner notes that instant claim 14 refers back to claim 1, which is directed to a method for stimulating plant growth comprising application of an extract obtained by liquid extraction, aqueous extraction or solvent extraction from at least one part of a Rocket plant, thereby promoting plant growth wherein the application on the plant is achieved by watering the soil, drop-by-drop irrigation, use in hydroponics, or seed coating. As noted above in the rejection of the claims under 35 USC 112(b) and 112(d), claim 14 thus falls within two statutory categories of invention, a product and a method. In the interest of compact prosecution, the dependency of claim 14 on claim 1 is interpreted to impose an intended use of the composition of claim 14 for examination under 35 USC 111. Thus, the claim is considered to read on “a biostimulant, which comprises an extract obtained by liquid extraction, aqueous extraction or solvent extraction, from at least one part of a Rocket plant”. The phrase “a biostimulant” merely describes a property of the extract, therefore, given the broadest reasonable interpretation, the phrase “an extract obtained by liquid extraction, aqueous extraction or solvent extraction, from at least one part of a Rocket plant”, reads either one or a combination of the substance naturally present in the Rocket plant that has been purified from the plant. For example, the claim reads on the pure substance glucosativin, derived from the Rocket plant E. sativa. As such the claim is directed to a product of nature, e.g. glucosativin, and does not recite any additional elements.
This judicial exception is not integrated into a practical application and not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claim does not require any other elements beyond the judicial exception itself.
Dependent claims 15-18 merely identify the plant from which the extract (i.e. purified substance) is derived or specify the method used to obtain the extract, and therefore also do not recite any additional elements other than the judicial exception.
Dependent claim 19 requires that the biostimulant be formulated into the form of, inter alia, a powder. As the term “powder” merely requires the isolated naturally occurring substance to be in solid, powdered form, this limitation also reads on the product of nature itself and does not recite any additional elements that amount to something more.
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.
Claims 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lord et al. (J. Agric. Food Chem. Vol 59, 7882-7890; publication year: 2011).
Lord discloses an extract of Eruca sativa leaves formed by grinding the leaves to a fine powder after flash freezing and subsequently extracting the leaf powder with tap water (i.e. aqueous extraction) then passing the extract through a filter to remove insoluble debris (page 7883, left col). As the extract is identical to that recited in the instant claims, the examiner considers its biostimulant property to be inherent.
The examiner notes that instant claim 14 refers back to claim 1, which is directed to a method for stimulating plant growth comprising application of an extract obtained by liquid extraction, aqueous extraction or solvent extraction from at least one part of a Rocket plant, thereby promoting plant growth wherein the application on the plant is achieved by watering the soil, drop-by-drop irrigation, use in hydroponics, or seed coating. As noted above in the rejection of the claims under 35 USC 112(b) and 112(d), claim 14 thus falls within two statutory categories of invention, a product and a method. In the interest of compact prosecution, the dependency of claim 14 on claim 1 is interpreted to impose an intended use of the composition of claim 14 for examination under 35 USC 102 and 103.
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.
Claims 1, 2, 4, 5, 7, 8, 10-12, and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Lord et al. (J. Agric. Food Chem. Vol 59, 7882-7890; publication year: 2011) in view of Messiha et al. (World Applied Sciences Journal Vol 26, No. 9, pages 1142-1149; publication date: 09/30/2013).
With regard to claims 1, 2, 4, 5, 10, and 11, Lord discloses that Eruca sativa (i.e. a Rocket plant) leaves contain bioactive compounds in the leaves that can act as biofumigants effective against soilborne pathogens and pests when the leaves are incorporated into the soil where the crops will be grown (abstract, page 7882, entire page). Lord also discloses an example where soil is treated with homogenized leaves of the Brassica plants, referred to as “green manure”, that is incorporated into the soil (page 7884, paragraph bridging left and right columns). For treatment of soil in which plants are grown, Lord discloses that the brassica tissue was extremely thoroughly homogenized (i.e. ground) and incorporated at 5% (w/w) with excess water (page 7888, right col; see also page 7884, right col). The incorporation of the green manure into the soil caused significant reduction in viability of encysted eggs of the pest G. pallida (page 7886, left col) and this toxicity to the pest G. pallida was due to the compounds contained in the leaf extracts (page 7885, left col). E. sativa leaf extracts caused about 75% suppression of G. pallida motility (page 7886, left col).
Thus, Lord discloses a method comprising application from at least one part, specifically the leaves, of a Rocket plant, specifically E. sativa, by watering the soil at the time of applying homogenized leaves of the E. sativa plant. The examiner does not consider the limitation “an extract obtained by liquid extraction, aqueous extraction, or solvent extraction” to patentably define over the addition of homogenized leaves in the presence of water because once combined with water, the “extract obtained by aqueous extraction” is formed from the water and homogenized (i.e. ground) leaves.
Lord discloses application to soil as a test substrate intended for growing plants, but does not disclose an example method in which the extract is delivered to a plant by watering soil that contains or later will contain a plant; however, applying the leaves with water to soil containing a plant (i.e. “application … by watering”) would have been prima facie obvious to one of ordinary skill in the art because the purpose of Lord’s study was to do so, specifically to protect crops from the nematode pest G. pallida.
With regard to the preamble recited in instant claim 1 requiring the method to stimulate plant growth, Lord discloses application with the intention of reducing pest populations; however, Lord is silent with respect to stimulating plant growth.
Messiha discloses a method in which allelochemicals from Brassicaceae plant seeds (title) are applied to maize crops (abstract). Powder from the seeds of Eruca sativa and Brassica rapa was applied to maize with the intention of controlling the weed purple nutsedge; however, Messiha found that the treatment also improved maize growth (i.e. stimulated plant growth; abstract).
It would have been prima facie obvious to investigate the ability of the leaf extract/homogenized leaf in water disclosed by Lord to stimulate the growth of plants other than the maize plants evaluated by Messiha. The skilled artisan would have been motivated to do so to increase crop yield and would have had reasonable expectation of success because this effect was observed in one plant species at some but not all concentrations (“low and middle concentrations of E. sativa … caused significant increase in all growth characters and total carbohydrate contents of maize compared to corresponding controls”; abstract). Thus, the examiner considers a method as rendered obvious by Lord in which increased growth is also achieved to have been prima facie obvious as of the instant effective filing date.
With regard to claim 7, Lord teaches a method of controlling pests for potato crops, therefore it would have been obvious to apply this method to potatoes (i.e. a vegetable).
With regard to claim 8, as noted above, Messiha discloses that E. sativa seed powder can not only control a weed population but also enhance maize growth. It would have been prima facie obvious to apply Lord’s method to maize. The skilled artisan would have been motivated to explore which parts of the E. sativa plant can be used to stimulate plant growth and protect from weed infestation in order to maximize use of the entire plant and minimize waste, and would have had reasonable expectation of success because isolating substance by extraction to test the effect of different fractions was routine practice in chemistry/biology as of the instant effective filing date. The examiner points out that at least instant claims 1 and 8 also read on applying extracts from seed powder. It would also have been obvious to apply extracts, as prepared by Lord’s method, of the E. sativa seed powder as a step in determining which compounds within the seed powder are responsible for the beneficial effects, as would have been standard for one of ordinary skill in the art as of the instant effective filing date, following the general protocol outlined by Lord to generate extracts.
With regard to claim 12, the examiner considers it a matter of routine to optimize the quantity of components of the E. sativa plant to achieve the stated goal of protecting crops from G. pallida infestation and/or the goal of increasing biomass of the crop plant in question. 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).
With regard to claims 14-18, as noted in the anticipation rejection above Lord anticipates claims 14-18 and so in anticipating these claims, said claims are also considered obvious under 35 USC 103(a) over Lord ("lack of novelty is the epitome of obviousness" May, 574 F.2d at 1089, 197 USPQ at 607 (citing In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974))).
Claims 3, 6, 9, 13, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Lord et al. (J. Agric. Food Chem. Vol 59, 7882-7890; publication year: 2011) and Messiha et al. (World Applied Sciences Journal Vol 26, No. 9, pages 1142-1149; publication date: 09/30/2013) as applied to claims 1, 2, 4, 5, 7, 8, 10-12, and 14-18 above, and further in view of Morra et al. (US 2008/0182751; publication date: 07/31/2008).
The relevant disclosures of Lord and Messiha are set forth above. As described supra, Lord discloses that leaves of the Brassica family Eruca sativa (i.e. a Rocket plant) contain bioactive compounds that can act as biofumigants effective against soilborne pathogens and pests, and Messiha discloses that Rocket plant tissue (specifically E. sativa) can also enhance the growth of maize crops. The bioactive compounds evaluated by Lord are glucosinolates that produce various toxins including isothiocyanates upon hydrolysis by myrosinase enzymes and the biocidal activity of brassica is generally attributed to the products of myrosinase hydrolysis. Lord discloses a method comprising the steps of homogenizing (i.e. grinding) leaves of the Rocket plant E. sativa followed by application to soil with water, which the examiner considers to render obvious instant claim 1 as detailed above and Lord discloses an aqueous extract of ground E. sativa leaves wherein the liquid extract has been separated from solids by filtration; however, Lord does not disclose a method in which an aqueous extract of ground E. sativa leaves wherein the liquid extract has been separated from solids by filtration is applied to a plant by watering or to a plant as required by instant claims 3, 6, and 13.
Morra, in the analogous art of Brassicaceae plant materials and methods for their use as biopesticides (title), discloses that plant material from the family Brassicaceae can be applied to soil prior to planting, simultaneously to planting, or subsequent to emergence of plants. Morra teaches that the effective glucosinolates may be extracted from plant material then applied followed by applying myrosinase or the glucosinolate and myrosinase can be co-applied to soil (abstract). Morra teaches further that their method is applicable to any plant that produces glucosinolates (0009), that the extract may be an aqueous extract (0043), and that the plant material may be selected from inter alia leaves (0036).
It would have been prima facie obvious to one of ordinary skill to apply the extract from Eruca sativa leaves to the soil of a plant by watering the soil with a composition containing the extract. Lord teaches that the components active against pests are contained within the aqueous extract. One having ordinary skill in the art would have understood in view of Morra that the aqueous extracts described by Lord contain glucosinolates that can be converted to pesticidal compounds by cotreatment with myrosinase. The skilled artisan would have had reasonable expectation of success because Lord establishes that the relevant glucosinolates are contained in the aqueous extracts, filtered to remove solids, formed from E. sativa leaves. See MPEP 2143(I)(D): applying a known technique to a known method to yield predictable results would have been prima facie obvious.
With regard to claim 9, Morra discloses treating cherry trees (0128 – 0131). The examiner considers it prima facie obvious to test the effect of E. sativa on the growth properties of any desirable plant (i.e. not weeds) to determine whether the plant parts or extracts may not only protect from pests but also enhance growth of the plant, as observed in maize.
With regard to claim 19, the plant material may be in the form of pellets (Morra: abstract). It would have been prima facie obvious to formulate the extract into a pellet because this was a standard type of formulation for applying active agents in agriculture as of the instant effective filing date.
Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-19 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-19 of copending Application No. 18494842 (reference application).
The ‘842 claims are an exact duplicate of the instant claims.
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Nonstatutory 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 1-7 and 9-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11800873.
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are an obvious variant of the instant claims.
The claims of the ‘873 patent embrace a method of applying 0.01-12 g/L of an extract of a Rocket plant extract to a plant with the effect of stimulating growth of the plant, wherein the plant is a lettuce, a vegetable, an ornamental plant, a tree or a shrub, wherein the Rocket plant is selected from Eruca sativa, Eruca vesicaria, Diplotaxis erucoides, Diplotaxis tenuifolia, Diplotaxis muralis, Bunias erucago, Bunias orientalis, Erucastrum nasturtiifolium, and Erucastrum incanum. The formulation can be in the form of powder, granules, dispersible granules or slow-diffusion granules. The extract is formed by a step of grinding at least one part of plants from the genus Eruca, Diplotaxis, Bunias, Erucastrum or Cakile to provide the extract, and a step of filtering solid portions of said extract to obtain a liquid. The extract can be applied foliar spray, watering the soil, drop-by-drop irrigation, use in hydroponics
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11800873 as applied to claims 1-7 and 9-19 above, and further in view of Messhia et al. World Applied Sciences Journal Vol 26, No. 9, pages 1142-1149; publication date: 09/30/2013)
The relevant limitations of the ‘873 patent are set forth above. The ‘873 patent does not recite a limitation requiring the plant to be maize.
Messiha discloses a method in which allelochemicals from Brassicaceae plant seeds (title) are applied to maize crops (abstract). Powder from the seeds of Eruca sativa and Brassica rapa was applied to maize with the intention of treating the weed purple nutsedge; however, Messiha found that the treatment also improved maize growth (i.e. stimulated plant growth; abstract).
It would have been prima facie obvious to apply the method of the ‘873 patent to maize because Messiah discloses that e. sativa also stimulates the growth of this crop, thus, one having ordinary skill would have been motivated to apply E. sativa extract in order to improve yield, and would have had expectation of success in view of Messiha who describes maize as responsive to E. sativa.
Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 21-47 of copending Application No. 16718226 (reference application); and
claims 1-20 of copending Application No. 18632495 (reference application)
in view of Messhia et al. World Applied Sciences Journal Vol 26, No. 9, pages 1142-1149; publication date: 09/30/2013).
The claims of the ‘226 and ‘495 applications embrace a method of applying an extract of a Rocket plant to a plant or tree with the effect of stimulating the plant’s or tree’s defenses, wherein the plant is a lettuce, a vegetable, an ornamental plant, or a shrub, wherein the Rocket plant is selected from Eruca sativa, Eruca vesicaria, Diplotaxis erucoides, Diplotaxis tenuifolia, Diplotaxis muralis, Bunias erucago, Bunias orientalis, Erucastrum nasturtiifolium, and Erucastrum incanum. The formulation can be in the form of powder, granules, dispersible granules or slow-diffusion granules. The extract is formed by a step of grinding at least one leaves of plants from the genus Eruca, Diplotaxis, Bunias, Erucastrum or Cakile to provide the extract, and a step of filtering solid portions of said extract to obtain a liquid. The extract can be applied foliar spray. Thus, the ‘226 and ‘495 claims do not expressly recite the claimed methods of application or the claimed outcome.
With regard to the method of application, foliar spray would supply water to the plant and is therefore considered to fall within the scope of “watering” recited in the instant claims.
With regard to the indented outcome of stimulating plant growth, Messiha discloses a method in which allelochemicals from Brassicaceae plant seeds (title) are applied to maize crops (abstract). Powder from the seeds of Eruca sativa and Brassica rapa was applied to maize with the intention of treating the weed purple nutsedge; however, Messiha found that the treatment also improved maize growth (i.e. stimulated plant growth; abstract).
It would have been prima facie obvious to investigate the ability of the leaf extract embraced by the ‘226 and ‘495 methods in order to stimulate the growth of plants. The skilled artisan would have been motivated to do so to increase crop yield and would have had reasonable expectation of success because this effect was observed in one plant species at some but not all concentrations (“low and middle concentrations of E. sativa … caused significant increase in all growth characters and total carbohydrate contents of maize compared to corresponding controls”; abstract). Thus, the examiner considers a method as rendered obvious by the ‘226 claims in which increased growth is also achieved to have been prima facie obvious as of the instant effective filing date.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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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/KATHERINE PEEBLES/ Primary Examiner, Art Unit 1617