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 .
Priority
This application is a National Stage entry of PCT/EP2022/063519, filed 5/19/2022, claims foreign priority to EP21174695.2, filed 5/19/2021.
Information Disclosure Statement
The IDS filed on 4/3/2024 has been considered. See the attached PTO 1449 form.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-5 and 16) in the reply filed on 5/11/2026 is acknowledged.
Claims 6-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention or species, there being no allowable generic or linking claim.
Claim Status
Receipt of Remarks filed on 5/11/2026 is acknowledged. Claims 1-16 are currently pending. Claims 6-15 have been withdrawn. Accordingly, claims 1-5 and 16 are currently under 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.
Claim 5 is 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 5 recites wherein the germination capacity of the seed is comparable with untreated seed. The term “comparable” is a relative term which renders the claim indefinite. The term “comparable” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what exactly constitutes “comparable”, e.g. what exactly is the germination capacity that would be considered as “comparable”. The instant specification disclose that “a comparable level of germination capacity means that treated seeds of a plant variety exhibits a germination rate which deviates at maximum +/- 10% from the germination rate of untreated seeds of the same plant variety, preferably the germination rate deviates at maximum +/- 5% from the germination rate of untreated seeds of the same plant variety, more preferably the germination rate deviates at maximum +/- 3% from the germination rate of untreated seeds of the same plant variety”. However, it still remains unclear whether a maximum deviation of +/- 10% is considered comparable or whether only a maximum deviation of +/- 3% or +/- 5% is allowed to be considered comparable. Neither the claims nor the specification clearly define what exactly constitutes “comparable” and this renders the claim indefinite.
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 1-5 and 16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception, specifically a natural phenomenon (product of nature) without significantly more. Specifically, the claims recite a seed treated with Quassia extract or at least one quassinoid or a composition comprising Quassia extract or at least one quassinoid, wherein the Quassia extract or component of the extract, or at least one quassinoid is adsorbed on the seed and/or absorbed into the seed (e.g. claim 1) and the claims also recite optionally in combination with additive comprising sticking agents based on natural resins (e.g. claims 2-3), without significantly more. The seed recited in the claims is not markedly different than the naturally occurring seeds which are a product of nature. The Quassia extract or at least one quassinoid or a composition comprising Quassia extract or at least one quassinoid, and sticking agents based on natural resins recited in the claims are also not markedly different than the Quassia extract, quassinoid or sticking agent based on natural resins which are found in nature and which are products of nature and a seed treated with any of these components does not structurally or materially change any of the naturally occurring individual components from how they exist when isolated in/from nature.
This judicial exception is not integrated into a practical application because even though the instantly claimed invention is a combination of different products (e.g. a seed and Quassia extract or quassinoid, and/or sticking agents based on natural resins), the different products are naturally occurring products of nature, without significantly more, and as decided by the courts in Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 76 USPQ 280, 281 (1948), the claims to bacterial mixtures were held ineligible as "manifestations of laws of nature" and "phenomena of nature". When the nature-based product is a combination produced from multiple components, the closest counterpart may be the individual nature-based components of the combination. For example, assume that applicant claims an inoculant comprising a mixture of bacteria from different species, e.g., some bacteria of species E and some bacteria of species F. Because there is no counterpart mixture in nature, the closest counterparts to the claimed mixture are the individual components of the mixture, i.e., each naturally occurring species by itself. See, e.g., Funk Bros., 333 U.S. at 130, 76 USPQ at 281 (comparing claimed mixture of bacterial species to each species as it occurs in nature). See MPEP 2016.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above, the claims are directed to and recite elements that are naturally occurring products and the combination of these instantly claimed elements are held ineligible as “manifestation of laws of nature” and “phenomena of nature” as discussed 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.
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 1-5 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Emiko et al. (JP2018024669A; 2018-02-15) (see attached English Translated copy) in view of Stoll (Natural Crop Protection, AGRECOL, ISBN 3-8236-1113-5, 1998) and Roswitha (DE10037670A1; 2002) (cited in IDS).
Emiko throughout the reference teaches composition having excellent pest control effect against harmful organisms such as harmful insects, mites and nematodes (e.g. abstract).
Emiko teaches a pest control composition contains a pyrazine derivative of formula I and one or more active components which include bactericidal agents and insecticidal agents among others (e.g. abstract). Emiko teaches that the present inventors have found that a compound represented by the following formula (I) or its N oxide compound and a group A to group E containing at least one active ingredient has an excellent controlling effect on pests. (e.g. last para on page 2). Emiko teaches extract of Quassia amara can be included as one of the active of Group B in the composition. (see e.g. page 52, last para). Emiko also teaches a rice seed which is treated with the composition disclosed by Emiko (see e.g. page 4 and 59-60). Emiko teaches the composition of the present invention can be applied by dressing to rice seeds, by immersing rice seeds before germination in the solution containing the present compound or the composition of the present invention. Emiko discloses method of applying the composition include dressing, spraying or coating the plant seed. (see e.g. page 38, 2nd and 3rd para; page 40, first para; see entire document).
The teachings of Emiko have been set forth above.
While Emiko teaches extract of Quassia amara can be included in the composition, Emiko does not expressly exemplify the composition comprising an extract of Quassia amara. Emiko also does not expressly teach the composition includes at least one quassinoid (e.g. quassin). However, Stoll and Roswitha cure these deficiencies.
Stoll teaches that Quassia amara contain quassin (i.e. quassinoid) and that it is an effective insecticidal against various insects. Stoll discloses that beneficial insects like ladybirds and honeybees are not killed by quassia preparations. (see e.g. pages 51, 58, 103-105; entire document).
Roswitha teaches plant protectant composition which comprises quassinoid and neem tree and provide pesticidal activity. Roswitha teaches using quassinoid active agent quassin in the form of extract of Quassia amara. (e.g. Title; abstract; Claims; entire document).
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 combined the teachings of Emiko, Stoll and Roswitha and specifically incorporate extract of Quassia amara and/or quassin (a quassinoid) in the composition of Emiko as taught by Stoll and Roswitha. As discussed supra, Emiko teaches that the present inventors have found that a compound represented by the following formula (I) or its N oxide compound and a group A to group E containing at least one active ingredient has an excellent controlling effect on pests. Emiko teaches extract of Quassia amara can be included as one of the active of Group B in the composition. Stoll teaches that Quassia amara contain quassin (i.e. quassinoid) and that it is an effective insecticidal against various insects. Stoll discloses that beneficial insects like ladybirds and honeybees are not killed by quassia preparations. Roswitha teaches plant protectant composition which comprises quassinoid and neem tree and provide pesticidal activity. Roswitha teaches using quassinoid active agent quassin in the form of extract of Quassia amara. As such, one skilled in the art would have been motivated to specifically include extract of Quassia amara from the list of various actives of Group B provided in Emiko because Emiko is directed to controlling pests in seeds/plants and Stoll teaches that Quassia amara is an effective insecticidal against various insects and that beneficial insects like ladybirds and honeybees are not killed by quassia preparations. Further, Stoll teaches that Quassia amara contain quassin (i.e. quassinoid) and thus reads on the quassinoid recited in the claims. Further, Roswitha teaches plant protectant composition which comprises quassinoid and neem tree and provide pesticidal activity (e.g. insecticidal). Roswitha teaches using quassinoid active agent quassin in the form of extract of Quassia amara. Therefore, it would have been obvious to one skilled in the art to utilize an amount of quassinoid which is effective to provide protection against insects, as recited in claim 4.
Regarding claim 5 wherein the germination capacity of the seed is comparable with untreated seed, the prior art teaches and renders obvious a seed treated with Quassia extract as recited in claim 1 and therefore, the germination capacity of the Quassia extract treated seed would necessarily be the same as recited in the instant claim.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art.
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 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 17795258 (US20230086007A1) in view of Emiko et al. (JP2018024669A; 2018-02-15), Stoll (Natural Crop Protection, AGRECOL, ISBN 3-8236-1113-5, 1998) and Roswitha (DE10037670A1; 2002) (cited in IDS).
‘258 claims a seed treated with denatonium benzoate adsorbed on the seed or absorbed into the seed, wherein the denatonium benzoate is present in an amount effective for protecting the seed against bird damage and/or insect damage. The seed is coated with denatonium benzoate in combination with one or more further active agents and/or additives. The additives comprise sticking agents based on natural resins. The treated seeds exhibit a germination rate which deviates at maximum +/- 10% from the germination rate of the untreated seeds.
‘258 does not teach the seed is treated with Quassia extract or at least one quassinoid (e.g. quassin). However, Emiko, Stoll and Roswitha cure this deficiency.
The teachings of Emiko, Stoll and Roswitha discussed supra are incorporated herein.
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 combined the teachings of ‘258, Emiko, Stoll and Roswitha and further include Quassia extract and/or quassinoid such as quassin to treat the seed of ‘258 to protect the seed against bird damage and/or insect damage. As discussed supra, Emiko teaches that the present inventors have found that a compound represented by the following formula (I) or its N oxide compound and a group A to group E containing at least one active ingredient has an excellent controlling effect on pests. Emiko teaches extract of Quassia amara can be included as one of the active of Group B in the composition. Stoll teaches that Quassia amara contain quassin (i.e. quassinoid) and that it is an effective insecticidal against various insects. Stoll discloses that beneficial insects like ladybirds and honeybees are not killed by quassia preparations. Roswitha teaches plant protectant composition which comprises quassinoid and neem tree and provide pesticidal/insecticidal activity. Roswitha teaches using quassinoid active agent quassin in the form of extract of Quassia amara. Thus, one skilled in the art would have been motivated to further include Quassia extract or quassinoid on the treated seed of ‘258 because both Quassia extract/quassinoid and denatonium benzoate were known to be useful in providing protection against insect damage. As a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06. Further, it would have been obvious to one skilled in the art to utilize an amount of quassinoid which is effective to provide protection against insects, as recited in claim 4.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/ALI S SAEED/ Examiner, Art Unit 1616
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