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 1-11 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 1-11 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 1 begins the numbering of the composition ingredients with number five “(v)”. This renders the claim indefinite because it is unclear whether the claimed composition also requires ingredients 1-4, that are not listed.
Claim 1 requires a ratio of potassium compounds to aliphatic carboxylic acids without indicating the type of ratio (e.g. molar, mass, etc.). The claim is indefinite because the relative amounts of each claimed substance are different depending on the type of ratio that is claimed.
Claim 2 is indefinite because the claim recites “… formic acid …. or their salts…”, and thus embraces a salt of formic acid, including a potassium salt of formic acid. the claim is indefinite because it is unclear whether the claim requires a different formic acid salt other than potassium formate of claim 1, or whether it reads on compositions containing exactly the same ingredients as claim 1.
Claim 3 recites “or their salts” in several locations. The repeated appearance of the claim calls into question whether all of the listed acids may be present in salt form or only those that appear immediately preceding the phrase “or their salts”.
The phrase “phenolic precursors” renders claim 3 indefinite because it is unclear what substances fall within the scope of this term.
The phrases “phenols” and “phenolic precursors” render claim 3 indefinite because they are listed as a type of carboxylic acid; however, these substances do not contain a carboxylic acid functional group and it is unclear what substances are embraced by these terms.
Claim 6 requires a percentage of antioxidant without indicating the type of percentage (e.g. molar, mass, etc.). The claim is indefinite because the amount of the claimed substance are different depending on the type of percentage that is claimed.
Claim 8 recites “for stimulating the growth in plants, to enhance yield and quality of produce”. These phrases are two distinct intended uses of the claimed composition and there is no conjunction (e.g. “and” or “or”) linking the phrases, therefore it is unclear whether both limitations are required, or only one.
Claim 10 recites “the phenolic precursors include…” The word “include” in this instance renders the claim indefinite because it is unclear whether the listed substances are limiting or merely exemplary.
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 1-5 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Fabry (US 8,207,089; issue date: 06/26/2012).
With regard to claim 1, Fabry discloses a composition for treating plants comprising ammonium salicylate (an aromatic carboxylic acid salt), potassium salicylate (a potassium salt of an organic acid and a plant growth hormone/growth regulator), and potassium acetate (a potassium salt of an organic acid; abstract). The composition may contain urea as a buffering and wetting agent (i.e. an adjuvant) in an amount of from 1-15% (col 5, lines 21-25). This range overlaps with the range required for adjuvant by instant claim 1. With regard to the ratio of potassium salt to organic acid required by the claims, Fabry provides the following guidance (paragraph bridging col 2-3):
The novel composition consists essentially of: aqueous solutions of a first reaction product, ammonium salicylate and excess salicylic acid, and a second reaction product, potassium acetate and excess potassium hydroxide, which are thereafter reacted together to form an aqueous, ammonium-potassium salicylate solution.
The first reaction product contains ammonium salicylate, which is formed by combining salicylic acid and ammonium hydroxide in a molar ratio of between about 1.90-2.19:1 which results in excess salicylic acid being present as a component of the first reaction product. The second reaction product contains potassium acetate, which is formed by combining potassium hydroxide and acetic acid in a molar ratio of at least about 3:1 which results in excess potassium hydroxide being present as a component of the second reaction product. Thereafter, the first reaction product and second reaction product are combined to form the novel composition. The novel composition can range from a weight ratio of from 0.01-5.0 parts first reaction product to 5.0-0.01 parts second reaction product.
The resultant range in final product provides a starting point for one of ordinary skill to optimize the concentrations of ammonium salicylate, potassium salicylate, and potassium acetate. See MPEP 2144.05.
With regard to the requirement that the composition show synergy, Fabry directs the artisan of ordinary skill to use an “effective amount” (col 4, lines 10-11) and as noted above, provides guidance as to the amount of each active component of the composition. The examiner does not consider the preamble characterizing the invention as synergistic to patentably define over the prior art because the artisan of ordinary skill, e.g. an individual with a Ph.D. in agricultural sciences, would have been motivated to test multiple dosage of each agent to achieve optimal effectiveness, including synergistic efficacy. Testing for optimal amounts of three effective compounds would have been a matter of routine for one of ordinary skill.
With regard to claims 2 and 3, as noted above, the composition contains potassium acetate (salt of acetic acid) and ammonium and potassium salicylate (salt of salicylic acid).
With regard to claim 4, the claim as it is currently worded does not require the presence of the plant growth hormone, listed as optional in claim 1. However, the examiner notes that the composition is aqueous (col 4, lines 37-38) and contains salicylate (abstract), which in aqueous solution equilibrates with water to form salicylic acid.
With regard to claim 5, The composition may contain water (col 4, lines 37-38; an excipient), NPK fertilizers and secondary and micronutrients (i.e. supplements; col 3, lines 57-59).
With regard to claim 7, the composition is liquid (for spray application Col 4, lines 37-40) and contains water (an excipient).
With regard to claim 8, this claim recites an intended use for the composition, and Fabry indicates the composition is suitable for providing bactericidal, fungicidal, insecticidal, hormonal and nutritional activity (abstract) all of which would improve the yield and quality of produce from treated plants.
With regard to claim 9, the composition is applied and has the benefits noted supra.
With regard to claim 10, the examiner notes that the claim as it is currently worded does not require the presence of the plant growth hormones/plant growth regulators because they are optional in claim 1 and claim 10 only limits the identity of this substance if it is present.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Fabry (US 8,207,089; issue date: 06/26/2012) as applied to claims 1-5 and 7-10 above, and further in view of Emerson et al. (US 2003/0040436; publication date: 02/27/2003).
The relevant disclosure of Fabry is set forth above. With regard to claim 6, Fabry discloses that the composition can contain additives (col 4, line 46) and that the goal is to form a stable composition with a long shelf life (col 4, lines 26-36), but Fabry does not disclose 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 Fabry. The artisan of ordinary skill would have been motivated to do so in order to do so in order to provide further assurance of a long shelf life, and had reasonable expectation of success because Fabry discloses additives are compatible and 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 Fabry (US 8,207,089; issue date: 06/26/2012) and Emerson et al. (US 203/0040436; publication date: 02/27/2003) as applied to claims 1-10 above, and further in view of Chen et al. (US 2008/0077251; publication date: 03/27/2008).
The relevant disclosures of Fabry 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.
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 1-5 and 7-10 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, and salicylic acid (a plant hormone and an aromatic organic acid) as well as adjuvants. The claims of the ‘827 application embrace potassium acetate, which is a salt of acetic acid, as recited in instant claim 2. The claims of the ‘835 application embrace potassium formate, which is a salt of formic acid, as required by instant claim 2. 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 1-5 and 7-10 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.
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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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