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
Pursuant to the amendment dated 07/20/2026, claims 3, 8, and 10 have been cancelled and new claims 12-23 have been added.
Claims 1, 2, 4-7, 9, and 11-23 are pending and under current examination.
All rejections not reiterated have been withdrawn.
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 15 and 16 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 15 is indefinite because the claim is internally contradictory. The claim recites “wherein the two or more carboxylic acids comprise citric, acid, salicylic acid, and ascorbic acid”. This language appears to require the three acids to be present; however, the phrase “the two or more comprise” implies that just two of the listed acids need be present in compositions falling within the scope of the claimed invention. Amending the claim to delete the phrase “two or more” would obviate the rejection. There would be no concern regarding antecedent basis as the phrase “the carboxylic acids” finds antecedent bases in the phrase “two or more carboxylic acids” recited in claim 1.
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 § 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, 7, 9, 12, 13, 18-20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (CN106747908; publication date: 05/31/2017) in view of El-Beltagi et al. (Fresenius Environmental Bulletin, 2017; 26: pp1091-1100; cited in the IDS filed 08/03/2026) as evidenced by Gouge et al. (US 20020077371; publication date: 06/20/2002) and as evidenced by Maccioni Baraona (US 20120269794; publication date: 10/25/2012).
With regard to claim 1, Jiang discloses a composition comprising potassium formate, cycocel (i.e. chlormequat, a plant growth regulator; Gouge: 0067), AES or AEO (i.e. alkyl ether sulfate surfactant or alcohol polyoxyethylene ether adjuvant surfactant). The composition further comprises an organic acid, wherein the acid can be one or more of citric, formic, acetic, propionic, salicylic, ethanedioic, malonic, benzoic, and/or succinic acid (claims 2 and 3). Thus, Jiang teaches a composition comprising a combination of potassium formate (i.e. potassium monophosphate), a plant growth hormone, an adjuvant, and the claimed carboxylic acids. Although the prior art teaches several combinations this does not render any particular formulation less obvious." Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). The claimed substances are considered prima facie obvious for this reason.
Moreover, although Jiang does not teach a reason to particularly select both salicylic and citric acids, such was known in the art:
El-Beltagi teaches that spraying plants under salt stress with salicylic acid and sodium citrate (the conjugate base of citric acid) enhances growth and yield and increases leaf chemical composition (abstract).
It would have been prima facie obvious to select citric acid and salicylic acid in combination from the list of organic acids taught by Jiang. One having ordinary skill would have been motivated to do so in order to improve salt stress tolerance of the plant and had reasonable expectation of success because the acids are taught as suitable by Jiang and effective by El-Beltagi.
With regard to the ratio of formate source to carboxylic acid, as well as the percentages of plant growth hormone/growth regulator &/or adjuvant, Jiang teaches a range of potassium formate of from 50-100 parts and 0-25 parts of the organic acid; and 35 parts AES/AEO, and 50-100 parts cycocel (abstract, claims). This would have given one of ordinary skill a starting point to optimize the quantities/ratios of these agents to achieve their stated benefits (see MPEP 2144.05).
With regard to claim 2, Jiang teaches formic acid may be included.
With regard to claim 7, El-Beltagi teaches spraying (abstract). This is considered prima facie obvious because formulations for spray were a well-established type of formulation as of the instant effective filing date (see MPEP 2143(I)(A)).
With regard to claim 9, Jiang and El-Beltagi teach application of the compositions.
With regard to claim 12, as noted above, the substances AEO and AES are nonionic and anionic surfactants, respectively.
With regard to claim 13, as noted above, Jiang and El-Beltagi together render obvious selecting a combination of salicylic and citric acid.
With regard to claim 18, as noted above, Jiang teaches a range of potassium formate of from 50-100 parts, this would give one of ordinary skill a starting point to optimize the amount of potassium formate in the composition to provide the taught benefit.
With regard to claim 19, as discussed above, the composition comprises cycocel (i.e. chlormequat, a plant growth regulator).
With regard to claim 20, as noted above El-Beltagi teaches spraying. The experimental section indicates that plats were sprayed in a manner that would contact leaves because leaves were present and the disclosure generally discusses spraying (page 1091, right col), so the leaves would have been contacted. Moreover, this was a routine application method as of the instant effective filing date.
With regard to claim 22, It would have been a matter of routine for one to determine the optimal application rate to see the benefits of the substances taught in the prior art.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (CN106747908; publication date: 05/31/2017) and El-Beltagi et al. (Fresenius Environmental Bulletin, 2017; 26:`pp1091-1100; cited in the IDS filed 08/03/2026) as evidenced by Gouge et al. (US 20020077371; publication date: 06/20/2002) and Maccioni Baraona (US 20120269794; publication date: 10/25/2012) as applied to claims 1, 2, 7, 9, 12, 13, 18-20, and 22 above, and further in view of Forlivio et al. (US 20170318812; publication date: 11/09/2017).
The relevant disclosures of Jiang and El-Beltagi are set forth above. Neither reference discloses the plant growth hormones/regulators required by instant claim 4.
Forlivio discloses that both chlormequat chloride and ethylene were known as of the instant filing date to stimulate plant growth.
It would have been prima facie obvious to use ethylene in the composition of Jiang/El-Beltagi because these substances were known to serve the same purpose as of the instant effective filing date (see MPEP 2144.06).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (CN106747908; publication date: 05/31/2017) and El-Beltagi et al. (Fresenius Environmental Bulletin, 2017; 26:`pp1091-1100; cited in the IDS filed 08/03/2026) as evidenced by Gouge et al. (US 20020077371; publication date: 06/20/2002) and Maccioni Baraona (US 20120269794; publication date: 10/25/2012) as applied to claims 1, 2, 7, 9, 12, 13, 18-20, and 22 above, and further in view of Eswaran et al. (US 20040031302; publication date: 02/19/2004).
The relevant disclosures of Jiang and El-Beltagi are set forth above. Jiang teaches a composition containing the excipients noted above (e.g. the AEO and/or AES surfactants) and substances such as coal base mineral resources (i.e. a supplement; claim 1). Neither reference discloses including an NPK fertilizer in the composition.
Eswaran teaches that it is conventional to provide the NPK requirement to plants in the agricultural setting (0054).
It would have been prima facie obvious to add an NPK fertilizer to the composition of Jiang/El-Beltagi because such was conventional as of the instant effective filing date (see MPEP 2143(I)(A)).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (CN106747908; publication date: 05/31/2017) and El-Beltagi et al. (Fresenius Environmental Bulletin, 2017; 26:`pp1091-1100; cited in the IDS filed 08/03/2026) as evidenced by Gouge et al. (US 20020077371; publication date: 06/20/2002) and Maccioni Baraona (US 20120269794; publication date: 10/25/2012) as applied to claims 1, 2, 7, 9, 12, 13, 18-20, and 22 above, and further in view of Emerson et al. (US 20030040436; publication date: 02/27/2003; of record).
The relevant disclosures of Jiang and El-Beltagi are set forth above. Neither reference discloses including an antioxidant.
Emerson, in the analogous art of agrochemical compositions (abstract), discloses that antioxidants in the range of 0.02% - 10% by weight can improve shelf life (0035).
It would have been prima facie obvious to add an antioxidant to the composition taught by Jiang/El-Beltagi. The artisan of ordinary skill would have been motivated to do so in order to do so in order to provide assurance of a long shelf life, and had reasonable expectation of success because Emerson discloses antioxidants were known to improve shelf life as of the instant effective filing date.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (CN106747908; publication date: 05/31/2017) and El-Beltagi et al. (Fresenius Environmental Bulletin, 2017; 26:`pp1091-1100; cited in the IDS filed 08/03/2026), and Emerson et al. (US 2003/0040436; publication date: 02/27/2003) as evidenced by Gouge et al. (US 20020077371; publication date: 06/20/2002) and Maccioni Baraona (US 20120269794; publication date: 10/25/2012) as applied to claims 1, 2, 6, 7, 9, 12, 13, 18-20, and 22 above, and further in view of Chen et al. (US 2008/0077251; publication date: 03/27/2008; of record).
The relevant disclosures of Jiang, El-Beltagi, and Emerson are set forth above. Neither reference discloses sodium nitroprusside.
Chen, who solves the problem of reducing oxidation of compositions affecting living things (title), discloses that sodium nitroprusside is an antioxidant (0119).
It would have been prima facie obvious to use sodium nitroprusside in the composition rendered obvious by Fabry/Emerson because one having ordinary skill would have recognized this substance as suitable for this purpose. See MPEP 2144.07.
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (CN106747908; publication date: 05/31/2017) and El-Beltagi et al. (Fresenius Environmental Bulletin, 2017; 26:`pp1091-1100; cited in the IDS filed 08/03/2026) as evidenced by Gouge et al. (US 20020077371; publication date: 06/20/2002) and Maccioni Baraona (US 20120269794; publication date: 10/25/2012) as applied to claims 1, 2, 7, 9, 12, 13, 18-20, and 22 above, and further in view of Abdou et al. (Biological agriculture & Horticulture 2014 30(2)131-143).
The relevant disclosures of Jiang and El-Beltagi are set forth above. Neither reference discloses including ascorbic acid in the composition.
Abdou teaches that treating plants (mint specifically) with salicylic acid and ascorbic acid increased inter alia dry weight (abstract).
It would have been prima facie obvious to also add ascorbic acid to the plant nutrient solution of Jiang/El-Beltagi. The artisan of ordinary skill would have been motivated to do so in order to further increase the yield of the plant and had expectation of success because Abdou teaches the combination of salicylic acid and ascorbic acid has this effect.
Regarding the proportions of citric and ascorbic acid vs. salicylic acid required by instant claim 16, the prior art teaches benefits of each and the examiner considers it a matter of routine to optimize the amounts of each acid to achieve their art-recognized benefits, absent a showing that the proportions are critical to an unexpectedly superior property (see MPEP 2144.05(II)(A)).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (CN106747908; publication date: 05/31/2017) and El-Beltagi et al. (Fresenius Environmental Bulletin, 2017; 26: pp1091-1100; cited in the IDS filed 08/03/2026) as evidenced by Gouge et al. (US 20020077371; publication date: 06/20/2002) and Maccioni Baraona (US 20120269794; publication date: 10/25/2012) as applied to claims 1, 2, 7, 9, 12, 13, 18-20, and 22 above, and further in view of Von Krosigk et al. (US 20040029961; publication date: 02/12/2004).
The relevant disclosures of Jiang and El-Beltagi are set forth above. Neither reference discloses using both potassium diformate and potassium monoformate (i.e. potassium formate).
Von Krosigk discloses that potassium diformate and potassium formate were both known sources of formate ion at the time the instant invention was formed. It would have been prima facie obvious to use both of these formate sources because they were known to serve the same purpose (see MPEP 2144.06).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (CN106747908; publication date: 05/31/2017) and El-Beltagi et al. (Fresenius Environmental Bulletin, 2017; 26: pp1091-1100; cited in the IDS filed 08/03/2026) as evidenced by Gouge et al. (US 20020077371; publication date: 06/20/2002) and Maccioni Baraona (US 20120269794; publication date: 10/25/2012) as applied to claims 1, 2, 7, 9, 12, 13, 18-20, and 22 above, and further in view of Chemla et al. US 20010014692; publication date: 08/16/2001).
The relevant disclosures of Jiang and El-Beltagi are set forth above. Neither reference discloses applying the composition as an injectable.
Chemla teaches either spraying or injecting an active onto plants (0059).
It would have been prima facie obvious to apply the composition by injection because this was a well-known method as of the instant effective filing date (see MPEP 2143(I)(D)).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (CN106747908; publication date: 05/31/2017) and El-Beltagi et al. (Fresenius Environmental Bulletin, 2017; 26:`pp1091-1100; cited in the IDS filed 08/03/2026) as evidenced by Gouge et al. (US 20020077371; publication date: 06/20/2002) and Maccioni Baraona (US 20120269794; publication date: 10/25/2012) as applied to claims 1, 2, 7, 9, 12, 13, 18-20, and 22 above, and further in view of Shibata et al. (US 20070274956; publication date: 11/29/2007).
The relevant disclosures of Jiang and El-Beltagi are set forth above. Neither reference discloses applying the composition to the listed crops.
Shibata teaches that inter alia, tomato, pepper, grape in addition to jujube were known crops as of the instant effective filing date.
It would have been prima facie obvious to apply the composition of Jiang/El-Beltagi to any of the above mentioned crops because this would have been applying a known technique to a known product to yield predictable results (see MPEP 2143(D)).
Response to Arguments
Applicant’s arguments with respect to the rejection of the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Insomuch as applicant’s arguments on page 8 of the remarks alleging unexpected results are relevant to the new grounds of rejection, they are addressed as follows: Please refer to MPEP 716.02(b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
In the instant case, data show increase in phenol concentration and in % protein in plants treated with the claimed combination of agents; however, the effect is modest, and these agents were generally known to have beneficial effect on plant growth. No synergy has been clearly demonstrated e.g. by the Colby method, and the increase in outcome appears additive at most. Additionally, all compositions according to the invention contain all three organic acids, therefore data is not commensurate in scope with the claims. Finally, the prior art teaches potassium formate in combination with organic acids is beneficial for crop plants. A side by side comparison to the closest prior art demonstrated a nexus between the difference and the allegedly superior findings has not been made of record.
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, 2, 4, 5, 7, 9, 12,13, and 17-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims
1-14 of copending Application No. 18551827 (reference application); and
1-20 of copending Application No. 18551835 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims render obvious the instant claims.
Inter alia, the claims of the ‘827 and ‘835 applications embrace an agricultural composition containing potassium monoformate, potassium diformate, citric, and salicylic acid (a plant hormone and an aromatic organic acid) as well as adjuvants. The copending applications both recite limitations specifying the presence of nitrogen, phosphorus, and potassium (i.e. NPK), micronutrients such as magnesium, plant growth hormones, and excipients or vehicles.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 6 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims
1-14 of copending Application No. 18551827 (reference application); and
1-20 of copending Application No. 18551835 (reference application)
as applied to claims 1, 2, 4, 5, 7, 9, 12,13, and 17-23 above, and further in view of Chen et al. (US 2008/0077251; publication date: 03/27/2008).
The relevant limitations of the copending applications are set forth above. Neither recites sodium nitroprusside.
Chen, who solves the problem of reducing oxidation of compositions affecting living things (title), discloses that sodium nitroprusside is an antioxidant (0119).
It would have been prima facie obvious to use sodium nitroprusside in the composition of the copending applications. The artisan of ordinary skill would have been motivated to do so in order to protect against oxidative damage and would have had reasonable expectation of success because sodium nitroprusside was known to provide this for agrochemical compositions 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.
Claims 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims
1-14 of copending Application No. 18551827 (reference application); and
1-20 of copending Application No. 18551835 (reference application)
as applied to claims 1, 2, 4, 5, 7, 9, 12,13, and 17-23 above, and further in view of Abdou et al. (Biological agriculture & Horticulture 2014 30(2)131-143).
The relevant limitations of the copending applications are set forth above. Neither requires ascorbic acid.
Abdou teaches that treating plants (mint specifically) with salicylic acid and ascorbic acid increased inter alia dry weight (abstract).
It would have been prima facie obvious to also add ascorbic acid to the plant nutrient solution of the copending applications. The artisan of ordinary skill would have been motivated to do so in order to further increase the yield of the plant and had expectation of success because Abdou teaches the combination of salicylic acid and ascorbic acid has this effect.
Response to Arguments
Applicant's arguments filed 07/20/2026 have been fully considered but they are not persuasive.
Regarding Applicant's argument that the double patenting rejections should be held in abeyance, the double patenting rejections apply to the claims as they are currently written, therefore these double patenting rejections are maintained. Further, Applicants’ request to hold the rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an objection or requirements as to form (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the rejection is maintained in the absence of a terminal disclaimer.
Conclusion
No claims are allowed.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617
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