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 .
Formal Matters
Claims 1-13 are pending.
Election/Restriction
Applicant’s election without traverse of Group I, claims 1-10, in the reply filed on 11/25/2025 is acknowledged.
Applicant also elected the following in the reply dated 11/25/2025:
Soybean oil as the species of the at least one selected from oil components; and
Combination of polyoxyethylene sorbitan fatty acid ester and sulfosuccinate as the species of the at least one selected from surfactants.
Claims 11-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 4-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species (i.e., the at least one selected from oil components was elected as soybean oil which is a vegetable fat/oil and not a mineral oil nor an essential oil), there being no allowable generic or linking claim.
Claims 1-3 and 6-10 are being examined to the extent of the elected species, i.e., the at least one selected from oil components is soybean oil and the at least one selected from surfactants is the combination of polyoxyethylene sorbitan fatty acid ester and sulfosuccinate.
Priority
This application is a 371 of PCT/JP2022/022264 filed 06/01/2022, claiming priority to JP 2021-093226 filed 06/02/2021.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) filed 11/03/2023 and 05/06/2025 have been considered by the Examiner. A signed copy of each IDS is included with the present Office Action.
Specification
The disclosure is objected to because each of the tables (i.e., Tables 1, 2-1, 2-2, 2-3, 2-4, 3-1, 3-2, 4-1, 4-2, 5-1, 5-2, 6-1, 6-2, 6-3, 6-4, 6-5, 6-6, 7-1, 7-2, 7-3, 7-4, 8-1, 8-2, 8-3, 8-4, 8-5, 8-6, and 9) present in the specification are illegible and each need to be replaced with a legible table. The Examiner suggests increasing font size as a strategy to improve legibility.
The disclosure is objected to because of the recitation of trade names and/or marks without the proper symbol in at least Par. [0031] spanning Pages 10-11 of the specification.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks; the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM, or ® following the term.
Applicant is requested to check throughout the disclosure for trade names and/or marks missing the proper symbol and make corrections accordingly.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because each recitation of “selected from” should be deleted in order to improve claim readability. The Examiner suggests amending claim 1 to recite “A plant disease control composition comprising D-tagatose, at least one oil component, and at least one surfactant.”
Claim 6 is objected to because “at least one” should be deleted from line 2 in order to improve claim readability and consistency (See Examiner suggestion for overcoming 112(b) rejections of claims 2 and 7-9 below).
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 2-3 and 6-9 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.
(a) Claim 2 recites the limitation "the oil component" spanning lines 1-2. There is insufficient antecedent basis for this limitation in the claim because neither claim 2 nor claim 1 earlier recite “an oil component”, but rather claim 1 earlier recites “at least one selected from oil components”. Thus, it is unclear whether ‘the oil component’ of claim 2 refers to just one of the oil components of claim 1, at least one of the oil components of claim 1, all of the oil components of claim 1, or whether something else is meant by the phrase. Claims 3 and 6 are rejected for depending from claim 2 without resolving the ambiguity of claim 2. In addition to the suggested amendment to claim 1 (See Claim Objections section above), the Examiner suggests amending claim 2 to recite “…wherein the at least one oil component is selected from the group consisting of…” in order to overcome this rejection.
(b) Claim 7 recites the limitation “the surfactant” in line 2. There is insufficient antecedent basis for this limitation in the claim because neither claim 7 nor claim 1 earlier recite “a surfactant”, but rather claim 1 earlier recites “at least one selected from surfactants”. Thus, it is unclear whether ‘the surfactant’ of claim 7 refers to just one of the surfactants of claim 1, at least one of the surfactants of claim 1, all of the surfactants of claim 1, or whether something else is meant by the phrase. Claims 8 and 9 are rejected for depending from claim 7 without resolving the ambiguity of claim 7. In addition to the suggested amendment to claim 1 (See Claim Objections section above), the Examiner suggests amending claim 7 to recite “…wherein the at least one surfactant is selected from the group consisting of…” in order to overcome this rejection.
(c) Claim 8 recites the limitation "the nonionic surfactant" spanning lines 1-2. There is insufficient antecedent basis for this limitation in the claim because none of claims 8, 7, or 1 earlier recite “a nonionic surfactant”, but rather claim 7 earlier recites “nonionic surfactants”. Thus, it is unclear whether ‘the nonionic surfactant’ of claim 8 refers to just one of the nonionic surfactants of claim 7, all of the nonionic surfactants of claim 7, or whether something else is meant by the phrase. The Examiner suggests amending claim 8 to recite “…wherein the nonionic surfactants are selected from the group consisting of…” in order to overcome this rejection.
(d) Claim 9 recites the limitation "the anionic surfactant" spanning lines 1-2. There is insufficient antecedent basis for this limitation in the claim because none of claims 9, 7, or 1 earlier recite “an anionic surfactant”, but rather claim 7 earlier recites “anionic surfactants”. Thus, it is unclear whether ‘the anionic surfactant’ of claim 9 refers to just one of the anionic surfactants of claim 7, all of the anionic surfactants of claim 7, or whether something else is meant by the phrase. The Examiner suggests amending claim 9 to recite “…wherein the anionic surfactants are selected from the group consisting of…” in order to overcome this rejection.
Claim Rejections - 35 USC § 103
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.
Claims 1-3 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ohara et al (US 2016/0037768 A1, published 02/11/2016, cited in IDS dated 11/03/2023).
Ohara et al teach a composition that enhances the plant disease control effect of a monosaccharide and is effective as an agricultural control composition, i.e., control agent, against plant disease, particularly plant disease caused by fungi and plant disease caused by bacteria (See entire document, e.g., Abstract, [0001], [0040], claims 9-10). The composition comprises a monosaccharide as an active ingredient and comprises at least one or more assistants selected from a nonionic surfactant (excluding acetylene glycol-based surfactants, fluorine-based surfactants and silicone-based surfactants), an anionic surfactant (excluding lignin sulfonate), a cationic surfactant, an amphoteric surfactant, a water-soluble polymer, an amino acid, an amino sugar, a disaccharide alcohol and a salt (e.g., Abstract, [0017], claim 1). Preferably, the monosaccharide is D-tagatose (e.g., [0020], [0056], claim 3). Preferably, the nonionic surfactant is selected from a list including polyoxyethylene sorbitan fatty acid esters (e.g., [0021], [0058]). Preferably, the anionic surfactant is selected from a list including sulfosuccinates (e.g., [0022], [0060]). Solvents that can be used in the composition are exemplified from a list including oils such as soybean oil (e.g., [0076], [0079], [0081]).
The specific combination of features claimed is disclosed within the broad generic ranges taught by Ohara et al but such “picking and choosing” within several variables does not necessarily give rise to anticipation (Corning Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989)). That being said, however, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious” (KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR at 1741). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton” (Id. at 1742). Consistent with this reasoning, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected various combinations of various disclosed ingredients of a plant disease control composition from within the prior art disclosure of Ohara et al and arrive at a plant disease control composition comprising D-tagatose as the monosaccharide active ingredient, polyoxyethylene sorbitan fatty acid ester and sulfosuccinate as assistants, and soybean oil as solvent “yielding no more than one would expect from such an arrangement.”
The plant disease control composition of Ohara et al, which is effective as a control agent for plant disease caused by fungi and by bacteria, comprising D-tagatose as the monosaccharide active ingredient, polyoxyethylene sorbitan fatty acid ester and sulfosuccinate as assistants, and soybean oil as solvent renders obvious the composition of instant claims 1-3 and 6-10.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAELEIGH ELIZABETH OLSEN whose telephone number is (703)756-1962. The examiner can normally be reached M-F 8-5 PM.
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, David Blanchard can be reached at (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/K.E.O./Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619