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 .
Claim Status
Claims 1-19 are pending and are examined in this Office Action.
Claim Interpretation
In claims 1 recitation of term “inhibiting growth” is interpreted as the applicant defines “ As used herein "inhibiting growth" or "growth inhibition" refers to reducing the total number of inflorescences (e.g., spikes or spikelet) or flowers of the plant at a predetermined time point following treatment (e.g., the end of the season) as compared to same in a plant of the same species and developmental stage (e.g., harvesting time from germination) under the same conditions not treated with the pollen, also referred to as "control"” (page 7, lines 20-24).
In claims 1 recitation of term “fitness” is interpreted as the applicant defines “As used herein "fitness" refers to the relative ability of the weed species of interest to develop, reproduce or propagate and transmit its genes to the next generation. As used herein "relative" means in comparison to a weed of the same species not having been artificially pollinated with the pollen of the invention and grown under the same conditions” (page 12, lines 16-19).
In claims 1 recitation of term “vegetative biomass” is interpreted as the applicant describes where vegetative does not include flowers where flowers are described as non-vegetative organs (page 14, lines 1-2), vegetative organs are stems and leaves (page 17, line 27) and vegetative parts of the plant are roots, stems, leaves (page 7 , lines 28-29) and biomass has been interpreted as defined by applicant “As used herein "biomass" or "plant biomass" refers to the amount (e.g., measured in grams of air-dry tissue or wet tissue) of a tissue produced from the plant in a growing season.” Hence vegetative biomass is a biomass not including any reproductive parts like flowers or inflorescence.
Claim Objections
Claims 6, 9 and 18 are objected to because of the following informalities:
Regarding claim 6, claim recite the phrase “multiple pollinations are effected at intervals” which does not make sense therefore applicants are advised to recite to phrase “multiple pollinations are carried out at intervals”.
In claim 9 line 2, claim recite “plantis” which is advised to add space between plant and is as “plant is”.
In claim 18, claim recite the phrase “Accase” which is short form for “(Acetyl-CoA Carboxylase)”, applicant is advised to include full form of the word since it appeared first time in claim 18.
Appropriate correction is required.
Claim Rejections - 35 USC § 112 – Indefiniteness
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 and 3-19 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. All dependent claims are included in these rejections unless they include a limitation that overcomes the deficiencies of the parent claim.
Regarding claims 1, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “Amaranthus species”, and the claim also recites “weed species” in line 10 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For example, Dako et al. (Published: 2014, Journal: Euphytica 197:303–317, DOI 10.1007/s10681-014-1081-9) teaches Amaranthus species are divided into vegetable, weeds and grain Amaranthus with short, large and mixed types with various foliage (page 305, left and right first paragraphs).
Regarding claim 6, claim recite phrase “multiple pollinations are effected at intervals” renders claim indefinite since it is not clear what does pollinations are effected at interval means. If applicant is intended to recite “multiple pollinations are carried out at intervals”, the recitation still render indefinite since the term “intervals” would be any numbers of intervals of days or any time frame. Applicant recite following the term the “and wherein at least one interval of said intervals is of 10-21 days.” this only provide one example of internal and other intervals would be of any time frame.
Applicants are advised to claim specific intervals and measuring unit of the time to carry out pollination.
Claim Rejections - 35 USC § 112 – Inadequate Written Description
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Analysis of Breadth of Claims
Amaranthus species is large genus of plants with many species that would require to have reduced vegetative biomass of the plants when pollinated with irradiated pollen (claim 1).
Inhibiting growth reduces vegetative biomass of the plurality of plants as compared to control plants of the weed species of interest (claims 1 and 2).
The competition with native pollination would encompass any level of competition (claim 1, item (ii)).
What is Described in the Specification
Applicant describes:
A viable pollen competes with native pollination, and alternatively, when native pollen competition does not exist, or very low levels of native pollen are present, pollination by the designed pollen inhibits apomixis of weeds and reduces their quantity (page 21, lines 16-21).
An experiment with 16 female A. palmeri plants, where 8 female plants were artificially pollinated with A. palmeri pollen collected from male plant in green house where the pollen was X-ray radiated with a dose of 150 Gy (page 38, lines 21-28).
A trend of reduction in the total number of spikes was observed as in Table 1, Table 2.
Various morphological parameters were also taken including plant height, main spike length, 5th spike length (from the top), number of primary spikes and number of secondary spikes at day 0, 12, 27 from experiment start days for different set of 20 female plant (page 39, Example 2, lines 15-25, page 40, lines 1-5).
reduction in the average number of secondary spikes was found between the group that was artificially pollinated with the X-ray irradiated pollen versus the group that did not receive the treatment (page 40, lines 5-7, Table 3 ).
Another set of experiment in field (page 40, Example 3) with the X-ray irradiated pollen where all the above-ground material of each A. palmeri female plant was cut that was allowed to develop their seeds to reach full maturity (page 41, lines 11-13) and was placed in large bags (page 41, lines 14-15) where the measurement of weight at harvest, dry weight and number of spikes were recorded (page 41, Table 4).
Furthermore, for experiment with Alopecurus myosuroides total flower heads have been counted (page 43, lines 26-27), dry weight with flowers (page 44, lines 8-10) and similar with other examples.
Difference Between What Described and What is Claimed
Applicant has not described their method where inhibiting growth reduces vegetative biomass of the plurality of plants as compared to control plants of said weed species of interest.
Applicant has not described their method where the artificial pollination was performed in condition where there was competition with native pollination (claim 1, item (ii)).
Applicant has not described any weed species of interest other than Amaranthus palmeri and Alopecurus myosuroides.
Applicant has not described at least 20 % of said plants exhibit stigma receptiveness from 7-30 days after flowering (claim 11).
Analysis
The purpose of the written description is to ensure that the inventor had possession at the time the invention was made, of the specific subject claimed. For a broad generic claim, the specification must provide adequate written description to identify the genus of the claim.
Applicant defines “As used herein "development of flowers" refers to any stage of flowering i.e., from development of non-vegetative organs till anthesis or to fully receptive stigma” (page 14, lines 1-2). Specification further describes vegetative organs as stems and leaves (page 17, line 27), vegetative parts of plant are roots, stems, leaves (page 7, lines 28-30). Specification defines” As used herein "biomass" or "plant biomass" refers to the amount (e.g., measured in grams of air-dry tissue or wet tissue) of a tissue produced from the plant in a growing season (page 8, lines 1-2). Therefore, it is clear from specification that vegetative biomass does not include flower or inflorescence structure.
Applicant has not described their method where inhibiting growth reduces vegetative biomass of the plurality of plants as compared to control plants of said weed species of interest. Applicant describes either reproductive biomass or vegetative biomass in combination with reproductive biomass and it does not describe to practice vegetative biomass separately. Applicant describes a reduction in the average number of secondary spikes was found between the group that was artificially pollinated with the X-ray irradiated pollen versus the group that did not receive the treatment (page 40, lines 5-7, Table 3). However instead of reproductive biomass Applicant claims their method reduces vegetative biomass of any plant in genus of Amaranthus (claim 1, line 8).
Furthermore, Applicant has not described their method where the artificial pollination was performed in condition where there was competition with native pollination (claim 1, item (ii)) and it will reduce the development of apomictic weed (page 21, lines 9-14) . It is further not clear what will be the effect of pollen competition to the reduction of vegetative biomass of the plurality of plants since some of the native pollen if contain favorable alleles could ultimately increase the vegetative biomass. Thus, the native pollination with other weeds that has high genetic variation would create an infinite genetic variation that could not always inhibit the growth or reduce the vegetative biomass of the plant. Furthermore, applicant have not reduced to practice to show what could be the effect of artificial pollination when performed in condition where there is competition with native pollination?
Furthermore, applicant have not provided stigma receptiveness of any of the plants reduced to practice and it is not further clear what would be the effect on vegetative biomass if artificial pollination of a plant is done in at least 7 days after the exhibition of stigma receptiveness and flowering as in claim 33 in plant species wherein receptiveness is less than 7 days. For example, Muthoni et al. (Published: 2012, Journal: Australian Journal of Crop Science, 6(3), 488-497) teaches in potato the receptivity of the sigma is about two days (page 489, right paragraph 3). Therefore, an artificial pollination after 7 -30 days in potato will not have any effect since the stigma is no more receptive after two days and there will not be any reduction in vegetative biomass.
Thus, since Muthoni et al. shows the stigma receptiveness can be less than 7 days and this depends on the species of plant, therefore, the fact that the method works for Amaranthus palmeri does not necessarily mean it is going to have the same effect in any other plant of Amaranthus genus of plants. There is no description provided for one of skill in the art to immediately envision which weed species of Amaranthus genus would have a reduction in vegetative biomass and which weed species would not have such reduction. There is no description provided on how does the effectiveness of the method for reduced vegetative biomass varies with competition with native pollen. So the Applicant has not reduced to practice a sufficient number of species of weeds of Amaranthus genus to support the breadth of the claims.
Applicant has not described the method would have been useful for any Amaranthus species since Amaranthus has large diversity of vegetative biomass and inflorescence structure. For example Yeshitila et al. (Published Year: 2024, Journal: CABI Agriculture and Bioscience 5:95 https://doi.org/10.1186/s43170-024-00288-1 pages 1-23) teaches in the sample of 120 amaranth genotypes there is high genetic diversity for many of the vegetative and inflorescence related traits (page 1, abstract, Tables 3 and 4). Furthermore, Dako et al. (Published: 2014, Journal: Euphytica 197:303–317, DOI 10.1007/s10681-014-1081-9) teaches different lengths and type of inflorescence structures in Amaranthus species with various taxonomy of the plants (page 305, Figure 1, see figure below). Dako et al. teaches Amaranthus species are divided into vegetable, weeds and grain amaranthus with short, large and mixed types with various foliage (page 305, left and right first paragraphs). Therefore, there is dearth of description of the pollination with the irradiated pollen reduce vegetative biomass of any of the Amaranthus species other than A. palmeri.
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Given the large size and structural diversity associated with the claimed genus, Applicant’s disclosure is not representative of the claimed genus as a whole. This point is particularly relevant because, as discussed above, the prior art speaks to the disconnection between the method requiring a broadly claimed genus of any plant of a Amaranthus species that require reduction in vegetative biomass after pollinating with pollen that reduces its fitness and also condition that require competition with native pollination.
"The test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to one skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharm, Inc, v EH Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Lockwood v. Amer. Airlines, ina, 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). "An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations. Lockwood, 107 F.3d at 1572, 41 USPG2d at 1966". While the written description requirement does not demand either examples or an actual reduction, actual "possession" or reduction to practice outside of the specification is not enough. Ariad Pharm, Inc. v. Eli Lilly & Co., 598 F,3d 1336,1352 (Fed. Cir. 2010). Rather, it is the specification itself that must demonstrate possession. Id.
Thus, based on the analysis above, Applicant has not met either of the two elements of the written description requirement as set forth in the court's decision in Eli Lilly. As a result, it is not clear that Applicant was in possession of the claimed genus at the time of the effective filing date of the claims.
Claim Rejections - 35 USC § 112 – Scope of Enablement
Claims 1-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the method of inhibiting growth of a plurality of plants of an A. palmeri in a growth area that reduce the total biomass of the plurality of plants, does not reasonably provide enablement for the method reduce the vegetative biomass of the plurality of plant in any Amaranthus species. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
An “analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention.” MPEP 2164.01. “A conclusion of lack of enablement means that. . . the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention [i.e., commensurate scope] without undue experimentation.” In re Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); MPEP 2164.01.
In In re Wands, 858 F.2d 731,8 USPQ2d 1400 (Fed. Cir. 1988), several factors implicated in determination of whether a disclosure satisfies the enablement requirement and whether any necessary experimentation is “undue” are identified. These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands, 858 F.2d 731,737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). No single factor is independently determinative of enablement; rather “[i]t is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others.” MPEP 2164.01. Likewise, all factors may not be relevant to the enablement analysis of any individual claim.
The Breadth of the Claims and nature of invention:
Amaranthus species is large genus of plants with many species that would require to have reduced vegetative biomass of the plants when pollinated with irradiated pollen.
The competition with native pollination would encompass any level of competition (claim 1, item (ii)).
Reduced vegetative biomass would encompass reduction in the vegetative part of the biomass.
The amount of direction provided by the inventor:
An experiment with 16 female A. palmeri plants, where 8 female plants were artificially pollinated with A. palmeri pollen collected from male plant in green house where the pollen was X-ray radiated with a dose of 150 Gy (page 38, lines 21-28).
A trend of reduction in the total number of spikes was observed as in Table 1, Table 2.
Various morphological parameters were also taken including plant height, main spike length, 5th spike length (from the top), number of primary spikes and number of secondary spikes at day 0, 12, 27 from experiment start days for different set of 20 female plant (page 39, Example 2, lines 15-25, page 40, lines 1-5).
Reduction in the average number of secondary spikes was found between the group that was artificially pollinated with the X-ray irradiated pollen versus the group that did not receive the treatment (page 40, lines 5-7, Table 3 ).
Another set of experiment in field (page 40, Example 3) with the X-ray irradiated pollen where all the above-ground material of each A. palmeri female plant was cut that was allowed to develop their seeds to reach full maturity (page 41, lines 11-13) and was placed in large bags (page 41, lines 14-15) where the measurement of weight at harvest, dry weight and number of spikes were recorded (page 41, Table 4).
Furthermore, for experiment with Alopecurus myosuroides total flower heads have been counted (page 43, lines 26-27), dry weight with flowers (page 44, lines 8-10) and similar with other examples.
The state of the prior art:
Applicant defines “As used herein "development of flowers" refers to any stage of flowering i.e., from development of non-vegetative organs till anthesis or to fully receptive stigma” (page 14, lines 1-2). Specification further describes vegetative organs as stems and leaves (page 17, line 27), vegetative parts of plant are roots, stems, leaves (page 7, lines 28-30). Specification defines” As used herein "biomass" or "plant biomass" refers to the amount (e.g., measured in grams of air-dry tissue or wet tissue) of a tissue produced from the plant in a growing season (page 8, lines 1-2). Therefore, it is clear from specification that vegetative biomass does not include flower or inflorescence structure.
Weiner et al. (Published: 2009, Journal: Journal of Ecology, 97:1220–1233) teaches vegetative (V, x-axis) and reproductive (R, y-axis) biomass may be misleading if plants are at different developmental stages wherein there is plasticity in growth and development of the reproductive and vegetative biomass (page 1220, Summary). Weiner et al. teaches in Amaranthus species for examples in A. retroflexus there is evidence of non-linearity between R and V (page 1224, Table 1). Therefore, the total weight at harvest, dry weight and number of spikes in A. palmeri would not predictably show the reduction in vegetative biomass which include flower or inflorescence structure.
The existence of working examples:
The Specification or state of the art does not teach a person with skill in the art how to use the subject matter within the full scope of these claims because:
Applicant does not teach the method reduce the vegetative biomass of the plurality of plant in any Amaranthus species.
Lack of a working example is a critical factor to be considered, especially in a case involving an unpredictable and undeveloped art. See MPEP § 2164.
Genetech, 108 F.3d at 1366, states that “a patent is not a hunting license. It is not a reward for search, but compensation for its successful conclusion” and “[p]atent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable”.
In the absence of guidance from either the instant disclosure or the art, it would require undue trial and error experimentation for a skilled artisan to make and use the broadly claimed method of reducing vegetative biomass of any Amaranthus species, with no reasonable expectation of success in arriving at a reducing vegetative biomass of in any Amaranthus species.
Given the nonlinear relationships between vegetative and reproductive biomass, the reduction in total biomass would not reasonably provide predictability with regard to reduction in vegetative biomass and dry weight as claimed.
Thus, in view of the unpredictability associated with the method leading to reduction in vegetative biomass, the lack of enabling guidance from either the instant disclosure or the art, and breath and diversity of the embodiments encompassed by the claimed genus, the lack of sufficient working examples, and the level of the art at the time of the invention, one of ordinary skill in the art must rely on undue trial and error experimentation to make and test the numerous polypeptides encompassed by the broad genera, in order to make and/or use the invention within the full scope of these claims.
For at least this reason, the Specification does not teach a person with skill in the art how to make and/or use the subject matter within the full scope of these claims.
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 1-7, 9, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-10, and 20 of copending Application No. 18701282 (reference application) (hereafter cited as ‘282). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1, 3, 4, 9 and 18, copending Application No. ‘282 claims 1, 9-10 and 2o discloses an artificially pollinating a weed species of Amaranthus species with irradiated pollen of the same species that reduce fitness of said weed species of interest, the method comprise applying ACCase inhibitor to the weed species.
copending Application No. ‘282 claim 8 recite at least 20% (i.e. could include 50%) of the plants were at flowering window.
Since the pollination is artificial, if done in natural field there would have been competition with native pollen.
Furthermore, since the method steps are same, the reduction in vegetative biomass or dry weight of the vegetative biomass, or inflorescence numbers, as compared to control plant would have been inherent result of the same method steps including the irradiated pollen in Amaranthus species.
Regarding claim 2, copending Application No. ‘282 claim 10 recite the weed species is A. tuberculatus.
Regarding claim 5, the pollination condition would comprise at least one single pollination condition.
Regarding claim 6, since the intervals is not defined it would be any intervals.
Regarding claim 7, the inhibition of growth is by at least 20% would have been inherent result of the same method steps including the irradiated pollen in Amaranthus species.
Claims 1 and 8 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-10, and 20 of copending Application No. 18701282 in view of Yang et al. (Published: 2004, Journal: New Phytologist, 164(2), pages 279-288).
Regarding claim 1, copending Application No. ‘282 claims 1, 9-10 and 2o discloses an artificially pollinating a weed species of Amaranthus species with irradiated pollen of the same species that reduce fitness of said weed species of interest, the method comprises applying ACCase inhibitor to the weed species.
copending Application No. ‘282 claim 8 recite at least 20% (i.e. could include 50%) of the plants were at flowering window.
Since the pollination is artificial, if done in natural field there would have been competition with native pollen.
Furthermore, since the method steps are same, the reduction in vegetative biomass or dry weight of the vegetative biomass, or inflorescence numbers, as compared to control plant would have been inherent result of the same method steps including the irradiated pollen in Amaranthus species.
Regarding claim 8, Yang et al. teaches M1 seeds obtained by pollinating with irradiated pollen showed linearly decreased seed set with increase of γ-Irradiation of doses (Yang, page 281, right column paragraph 3).
Therefore, it would have been obvious to a skilled in the art to use γ-Irradiation to produce the irradiated pollen.
Claims 1 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-10, and 20 of copending Application No. 18701282 in view of Spaunhorst et al. (Published online: 27 March, 2018, Journal: Weed Science 66(4):457-469).
Regarding claim 1, copending Application No. ‘282 claims 1, 9-10 and 2o discloses an artificially pollinating a weed species of Amaranthus species with irradiated pollen of the same species that reduce fitness of said weed species of interest, the method comprises applying ACCase inhibitor to the weed species.
Copending Application No. ‘282 claim 8 recite at least 20% (i.e. could include 50%) of the plants were at flowering window.
Since the pollination is artificial, if done in natural field there would have been competition with native pollen.
Furthermore, since the method steps are same, the reduction in vegetative biomass or dry weight of the vegetative biomass, or inflorescence numbers, as compared to control plant would have been inherent result of the same method steps including the irradiated pollen in Amaranthus species.
Regarding claim 11, copending Application No. ‘282 does not recite condition of its method comprise pollinating 7-30 days following plant started flowering.
However, it is known in the art for some weed plant for example for Amaranthus palmeri, Spaunhorst et al. provide evidence that the weed plant produces seed within a long span of 2-3 weeks (i.e. 21 days) after flowering (page 458, left paragraph 3) and within 27 days and longer for example in early season measured after inflorescence emergence which varied depending on the season, not exceeding more than 50 days (Spaunhorst, page 460, Table 3). Thus from this evidence it is clear that pollinating throughout the active inflorescence of 7-30 days time range would be effective to inhibit growth.
Thus, it would have been obvious from some teaching of copending Application No. ‘282 that teaches a method for weed control method comprising artificially pollinating a weed species of interest with the pollen that reduces fitness of Amaranthus species, wherein artificial pollination results in reduced vegetative biomass. Further modify the method of copending Application No. ‘282 to include pollinating 7-30 days so that it would cover flowering time period of a weed species for example flowering time period of Amaranthus as taught by Spaunhorst in the same field of weed control that would have resulted in predictable variation of the method that further comprise pollinating 7 -30 days following time at which at least 20 % of said plants exhibit stigma receptiveness and have started flowering.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1, 3-17 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. US 7,314,979 B2 (Herein referenced as ‘979). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, patent No. ‘979 claim 1 recites a method of inhibiting growth of a plurality of A. palmeri plants, method comprising artificially pollinating inflorescences of said plants with irradiated pollen that reduces vegetative biomass and the pollination is performed under when least 20% of the plants in the growth area are flowering female plants having more than 1 spike per plant longer than 4cm and competition with native pollen.
Patent No. ‘979 claim 17 recites the method further comprise treating the plant with an herbicide.
Regarding claim 3, patent No. ‘979 claim 2 recites the biomass is dry weight.
Regarding claim 4, patent No. ‘979 claim 3 recites inhibiting growth further comprise a reduced number of inflorescences.
Regarding claim 5, patent No. ‘979 claim 4 recites the method comprise single or multiple pollinations.
Regarding claim 6, patent No. ‘979 claim 5 recites the pollination is carried out in intervals of 10-21 days.
Regarding claim 7, patent No. ‘979 claim 6 recites the inhibition is by at least 20%.
Regarding claim 8, patent No. ‘979 claim 7 recites the pollen is irradiated by X-ray.
Regarding claim 9, patent No. ‘979 claim 8 the 20% growing flowering plant is at least 40%.
Regarding claim 10, patent No. ‘979 claim 9 recite the plant comprise 6-12 spikes.
Regarding claim 11, patent No. ‘979 claim 1 the pollination is done in the 7-30 days.
Regarding claim 12, patent No. ‘979 claim 11 recites the method with pollination condition of inflorescence length per plant is 20-400 cm.
Regarding claim 13, patent No. ‘979 claim 12 recites inflorescence length per plant is 20-400 cm, an n (where n is at least 2) pollination of said multiple pollinations is effected when total inflorescence length is 1.3-5 times longer than said length at n-1 pollination of said multiple pollinations.
Regarding claim 14, patent No. ‘979 claim 12 recites the predetermined number of spike is at least 6 or 12.
Regarding claims 15 and 16, patent No. ‘979 claims 14 and 15 recite the first pollination is affected when a fraction of the plants have secondary spikes and the fraction of the plant more than 1 spike per plant longer than 4 cm.
Regarding claims 17 and 19, patent No. ‘979 claims 16 and 18 recite the weed species is herbicide resistance weed and the treating is prior to pollinating.
Claims 1, 2 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 17 of U.S. Patent No. US 7,314,979 B2 in view of Heat et al. (Published: 2014, Journal: Pest Manag. Sci. 70: 1305 DOI 10.1002/ps.3696).
Regarding claim 1, patent No. ‘979 claim 1 recites a method of inhibiting growth of a plurality of A. palmeri plants, method comprising artificially pollinating inflorescences of said plants with irradiated pollen that reduces vegetative biomass and the pollination is performed under when least 20% of the plants in the growth area are flowering female plants having more than 1 spike per plant longer than 4cm and competition with native pollen.
Patent No. ‘979 claim 17 recites the method further comprise treating the plant with an herbicide.
Regarding claim 2, patent No. ‘979 does not teach the method can be used for inhibiting vegetative biomass of A. tuberculatus.
Heat et al. teaches Amaranthus tuberculatus in the Mid-West have the greatest economic impact of all glyphosate-resistant weeds and they have also developed resistance to herbicides (page 1309, right first paragraph).
Therefore, it would have been obvious to develop the method of inhibition of vegetative growth in the devastating weed of A. tuberculatus for favorable economic impact of having higher yield in the crops with inhibited weeds.
Regarding claim 18, Patent No. ‘979 does not teach treating with Accase inhibitor.
Heat et al. teaches Amaranthus species being resistant to Accasse inhibitor herbicides (page 1309, last paragraph) which are found in different crops of cotton, corn, soybean etc. (page 1312, Table 3).
Therefore, it would have been obvious to treat the Amaranthus species with the herbicide Accasse that would have more effect on reduced fitness of the weed.
Conclusion
No claims are allowed.
The claims 1-19 appear to be free of prior art. The closes prior art is Yang et al. (Published: 2004, Journal: New Phytologist, 164(2), pages 279-288), which teaches the growth of the M1 seeds obtained by pollinating with irradiated pollen showed linearly decreased seed set with increase of γ-Irradiation of doses (Yang, page 281, right column paragraph 3). Yang teaches for a dose of 1200 Gy, pollination with the irradiated mature pollen induced elongation of siliquas and ovules as normal and however, in this case all of the ovules shrank and aborted, implying that embryos or endosperm arrested at an early stage and no seed was obtained (Yang, page 281, right paragraph 3). The patentable distinction of the instant claims from prior art is Yang et al. does not teach the pollinated plant has reduced vegetative biomass of the plants as compared to control plants.
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/SANTOSH SHARMA/Examiner, Art Unit 1663
/DAVID H KRUSE/Primary Examiner, Art Unit 1663