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
Claim 1 is pending.
Information Disclosure Statement
The IDS dated 3/5/2024 has been considered. A signed copy is enclosed herewith.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Naik et al. (“Effect of a root growth promoter on selected crops grown in India”, Plat Physiol. Rep., 6 April 2020, vol. 25, no. 2, pp. 284-297; hereafter as “Naik”).
The instant claim is drawn to a method for promoting tillering of gramineous plants comprising treating gramineous plants with a compound represented by Formula (I):
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138
290
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wherein R represents a hydrogen atom or a hydroxy group; and X represents a halogen atom; or a salt thereof.
Regarding instant claim 1, Naik teaches treating gramineous plants (e.g., rice) with a compound known as SomRE having the following structure:
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99
150
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(i.e., structure of Formula (I), wherein R represents a hydrogen atom and X represents the halogen atom, bromide) (Abstract; Fig. 2a). It is noted that the instant specification discloses that the compound is used in the form of a 1.0 ppm to 1.0 ppm aqueous solution ([0019] of the instant specification). Naik also teaches using aqueous solutions of SomRE in concentrations of 0.1 and 1.0 ppm (page 285, right col., 1st full para.; page 287, left col.). Naik teaches treatment with SomRE resulted in improved root length and shoot height and, in turn, improved yield (Abstract; pg. 290).
While Naik does not explicitly recite, “for promoting tillering”, MPEP 2112.02 states,
The discovery of a new use for an old structure based on unknown properties of the structure might be patentable to the discoverer as a process of using. In re Hack, 245 F.2d 246, 248, 114 USPQ 161, 163 (CCPA 1957). However, when the claim recites using an old composition or structure and the "use" is directed to a result or property of that composition or structure, then the claim is anticipated. In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978) (Claims 1 and 6, directed to a method of effecting nonaddictive analgesia (pain reduction) in animals, were found to be anticipated by the applied prior art which disclosed the same compounds, as well as a method of using them for effecting analgesia but which was silent as to addiction. The court upheld the rejection and stated that the inventors had merely found a new property of the compound and such a discovery did not constitute a new use. The court went on to reverse the obviousness rejection of claims 2-5 and 7-10 which recited a process of using a new compound. The court relied on evidence showing that the nonaddictive property of the new compound was unexpected.). See also In re Tomlinson, 363 F.2d 928, 150 USPQ 623 (CCPA 1966) (The claim was directed to a process of inhibiting light degradation of polypropylene by mixing it with one of a genus of compounds, including nickel dithiocarbamate. A reference taught mixing polypropylene with nickel dithiocarbamate to lower heat degradation. The court held that the claims read on the obvious process of mixing polypropylene with the nickel dithiocarbamate and that the preamble of the claim was merely directed to the result of mixing the two materials. "While the references do not show a specific recognition of that result, its discovery by appellants is tantamount only to finding a property in the old composition." 363 F.2d at 934, 150 USPQ at 628 (emphasis in original)). Emphasis added.
In this instance, Naik teaches the method step of treating gramineous plants with a composition represented by Formula (I) in the same amounts as disclosed in the instant specification. One would reasonably expect performing the method taught by Naik would necessarily result in claimed property/effect of promoting tillering of gramineous plants.
Thus, the teachings of Naik render the claim anticipated.
Conclusion
All claims have been rejected; no claims are allowed.
Correspondence
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/CASEY S HAGOPIAN/Examiner, Art Unit 1617