DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Claims 1-4, 6, 9, 10, 12-15, 71, 73-78, 80, 81, 86, 90, 93, 95, 97, 98, 100, and 102 are currently pending.
Election/Restrictions
3. Applicant’s election of Group I, claims 1, 3, 4, 6, 9, 10, 12-15, indole-3-acetic acid for species A and 3-O-caffeoylquinic acid for species B in the reply filed on December 23, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
4. Claims 2, 4, 10, 12, 13, 71, 73-78, 80, 81, 86, 90, 93, 95, 97, 98, 100, and 102 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim.
5. Claims 1, 3, 6, 9, 14, and 15 are examined on the merits solely in regards to the elected species.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 6, 9, 14, and 15 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.
6. Claims 1, 3, 6, 9, 14, and 15 are indefinite because they are directed to a “system” rather than one of the four statutory categories of invention. It appears that applicant intends to claim a composition with an intended use for the biosynthesis of polyphenols in lettuce. This is because the specification defines the “system” as the presence of an elicitor in a form that can be administered to a plant (see page 21), because the claims do not contain any active method steps, and because the method of using the “system” is claimed separately in claim 2. Thus, the claims are interpreted as composition claims for examination.
7. Claims 1, 3, 6, and 9 are indefinite because it is unclear if the “/” between “eustressor/elicitor” means “and” or “or”.
8. Claim 14 is indefinite because it is unclear if the “/” between “acid/derivatives” means “and” or “or”.
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.
9. Claims 1, 3, 6, 9, 14, and 15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because they are directed to a “system” which is a non-statutory category of invention.
10. Claims 1, 3, 6, 9, 14, and 15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural product without significantly more.
MPEP § 2106 sets forth the Subject Matter Eligibility Test to determine if a claim is directed to patent eligible subject matter. Step 1 asks if a claim is directed to a statutory category of invention. As discussed above, applicant’s claims are interpreted as product claims; thus, the answer to Step 1 is Yes.
The analysis then moves to Step 2A, Prong One, which asks if a claim recites to a product of nature. In this case, applicant’s claims recite a composition comprising indole-3-acetic acid. Indole-3-acetic acid is a naturally occurring compound. Thus, the claims do recite products of nature. MPEP § 2106.04(b) states that “When a claim recites a nature-based product limitation, examiners should use the markedly different characteristics analysis discussed in MPEP § 2106.04(c) to evaluate the nature-based product limitation and determine the answer to Step 2A.”
MPEP § 2106.04(c)(I) states that “if the nature-based product limitation is not naturally occurring, for example due to some human intervention, then the markedly different characteristics analysis must be performed to determine whether the claimed product limitation is a product of nature exception…”. To perform the markedly different characteristic analysis, MPEP § 2106.04(c)(II) states “The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties…”.
In this case, the claims read directly on the natural compound indole-3-acetic acid. There can be no markedly distinct characteristic between the claimed product and the closest naturally occurring counterpart because they are one and the same. Thus, the claims read directly on a product of nature. Claim 9 states that the compound is present in specific amounts. However, this cannot produce a markedly distinct characteristic, it simply indicates that the natural product is present in an amount. Therefore, the answer to Step 2A, Prong One, is Yes.
Thus, the analysis must move to Step 2A, Prong Two, which asks if the claim recites additional elements that integrate the judicial exception into a practical application. As discussed in MPEP § 2106.04(d)(2) this evaluation is performed by identifying whether there are additional elements recited in the claim beyond the judicial exception and evaluating these additional elements to determine whether the claim as a whole integrates the exception into a practical application. In this case, applicant’s claims are directed to a composition is a eustressor/elicitor with an intended use of increasing the production of polyphenols in lettuce. MPEP § 2106.04(d)(2) specifically states that a claim is only directed to “an intended use of a claimed invention or a field of use limitation, then it cannot integrate a judicial exception under the ‘treatment or prophylaxis’ consideration.” Therefore, applicant’s intended use is not sufficient to integrate the judicial exception into a practical application. . Thus, the answer to Step 2A, Prong Two, is No.
Thus, the analysis must move to Step 2B which asks if claims recite additional elements that amount to significantly more than the judicial exception. MPEP § 2106.05 states that this evaluation is performed by “Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.” In this case, the additional element is the intended use. However, as discussed in MPEP § 2106.05(I)(A), “Generally linking the use of the judicial exception to a particular technological environment or field of use” is not considered to be enough to qualify as significantly more. An intended use of a claimed composition only generally links the exception to the field of use. Therefore, the additional elements are not considered to amount to significantly more. Thus, the answer to Step 2B is No. Consequently, the claims are not directed to patent eligible subject matter.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
11. Claim(s) 1, 3, 6, 9, 14, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liang (E3S Web of Conferences (2019), vol. 136, no. 07002, four pages).
This reference teaches indole-3-acetic acid for application to plants at a concentration of 10 µM (see second paragraph of “Introduction”).
The reference does not teach that the composition is used to promote the biosynthesis of polyphenols in lettuce. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The prior art composition is structurally the same as the claimed composition. Thus, the prior art composition should be capable of performing the intended use if applicant’s invention functions as claimed.
12. Claim(s) 1, 3, 6, 9, 14, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Couture (US 2014/0024104).
This reference teaches indole-3-acetic acid for application to plants at a concentration of 5, 10, 15 µM or any amount between 5 and 200 µM (see paragraph 81).
The reference does not teach that the composition is used to promote the biosynthesis of polyphenols in lettuce. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The prior art composition is structurally the same as the claimed composition. Thus, the prior art composition should be capable of performing the intended use if applicant’s invention functions as claimed.
13. Claim(s) 1, 3, 6, 9, 14, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao (CN 104871955 A; September 2, 2015; English translation).
This reference teaches indole-3-acetic acid for application to plants at a concentration of 15 µM (see claim 2 in the translation).
The reference does not teach that the composition is used to promote the biosynthesis of polyphenols in lettuce. However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The prior art composition is structurally the same as the claimed composition. Thus, the prior art composition should be capable of performing the intended use if applicant’s invention functions as claimed.
14. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Susan Hoffman whose telephone number is (571)272-0963. The examiner can normally be reached M-Th 8:30am - 5:00pm.
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/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655