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 1-18 are currently pending.
Claims 9,13,18 are withdrawn.
Claims 1-8, 10-12, and 14-17 are being examined on the merits.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. This application is a CON of PCT/JP2022/039113 (10/20/2022) which claims priority to FOR JP2021-174292 (10/26/2012) as reflected in the filing receipt issued April 08, 2024.
Election/Restrictions
Applicant's election with traverse Group I (claims 1-8, 10-12, and 14-17) in the reply filed on March 26, 2026 is acknowledged. The traversal is on the ground(s) that the restriction does not 1) identify the groups as independent or patentably distinct and 2) that the search burden reasons and examples to support conclusions regarding patentable distinction.
This is not found persuasive because the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. The claimed method can be practiced with materially different product. For example, one can practice the method for applying any agricultural compositions such as pesticides and herbicides.
Moreover, Group I is classified differently than Group II and the inventions are independent or patentably distinct and demonstrates search burden.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9, 13, 18 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 26, 2026.
Information Disclosure Statement
The Information Disclosure Statement(s) submitted on April 08,2024 and October 14, 2025 are being considered by the Examiner.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 8,12 and 17 are rejected under 35 U.S.C 102(a)(1) as being anticipated by Yamauchi et al (JP2011157307A: Published on August 18, 2011, cited in IDS).
Claim 1, drawn to “A heat tolerance-inducing agent for plants, comprising a carrier composed of an active ingredient including at least one compound having a boiling point or sublimation point of 200°C or lower supported on a porous material.”
Yamauchi et al (2011), throughout teaches a plant high temperature tolerance inducer of active ingredient represented by general formula(I).
For claims 1, 7, 11, 16: Yamauchi et al (2011) teaches active ingredient in the high temperature tolerance inducer … active ingredient …applied to a cultivation carrier (claim 6). Reference also teaches specific examples of the compound represented by the general formula (I) include …2-hexenal (paragraph 0013), which reads on the unsaturated carbonyl compound of claims 7, 11, 16. The compound 2-hexenal is known to have a boiling point of about 70°C. References also discusses in the examples the inert carrier can be either solid or liquid... include…silicas… zeolite… etc. (paragraph 0017), where the silicas and zeolite are disclosed as porous material in the instant specification in paragraph 0017.
For claims 2 and 3: Yamauchi et al (2011) also teaches carriers include …silicas (e.g., diatomaceous earth, silica sand, mica, etc.) … (e.g., …zeolite…), …or can be used in the form of a mixture of two or more (paragraph 0017), where diatomaceous earth points to porous material, which is disclosed in the instant specification in paragraph 0017.
For claim 8, 12, and 17: Yamauchi et al (2011) teaches high temperature-resistant inducer of the plant contains a compound represented by formula (1) as an active ingredient (paragraph 0010). Reference teaches specific examples of the compound… 2-hexenal (paragraph 0013).
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.
Claims 1-3, 4- 6, 7, 8-9, 10, 11, 14, 15, and 16 are rejected under 35 U.S.C 103 as being unpatentable over Yamauchi et al (JP2011157307A: Published on August 18, 2011; Filed on February 02, 2010) in view of Wachendorff (CN 104812247; Published on July 29, 2015) and Alfred A. Christy (Quantitative determination of surface area of silica gel particles by near infrared spectroscopy and chemometrics. Colloids and Surfaces A: Physicochemical and Engineering Aspects. Vol. 322 (1-3): 248-252; 2008)
Yamauchi et al (2011), throughout teaches a plant high temperature tolerance inducer of active ingredient represented by general formula(I), as discussed above.
Yamauchi et al (2011) does not teach “silica gel” of claim 4 and the % (or amount) of silica as recited in claim 5, and “the surface area of the porous material is within a range from 100 to 1,000 m2/g”, recited in claim 6, 10,15.
Wachendorff et al throughout teaches mixture uses thereof as biologically active compounds, in particular for controlling harmful microorganisms in crop protection and material protection, and for enhancing plant health.
For claim 4: Wachendorff et al teaches solid fillers and carriers include inorganic particles, such as… silica, so-called fine particulate silica, silica gel (paragraph 0174).
For claim 5, 6, 10, 14, and 15: Christy teaches surface areas of six silica gel samples with varying surface area (300–750m2/g) have been determined by the common Brunauer–Emmett–Teller (BET) method and used in preparing mixtures of silica gel (abstract). Christy also teaches porous material such as silica gel, where it is the amorphous form of silica (i.e. consists of 100% silica), which reads on claims 5 and 15 (introduction paragraph 1).
Therefore, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to make a heat tolerance-inducing agent comprising of porous materials as taught by Yamauchi by substituting the diatomaceous earth with silica gel taught by Wachendorff, because it is known and routine to use silica gel. Further, because the surface area of silica gel to make the inducing agent as Christy teaches surface area and that silica gel consists of 100 percent of silica, it is routine to use silica gel and diatomaceous earth interchangeably. In addition, it would have been obvious to one skilled in the art to substitute one type of porous material with the silica gel it is known to have agricultural uses and advantages for plant health, controlling harmful microorganisms, and crop protection and routinely used in heat tolerance-inducing agents.
Moreover, it would have been obvious to optimize the amount of silica gel to achieve the desired surface area for heat tolerance-inducing agent for the protection of plants, because the Yamauchi et al reference teaches porous materials which are routinely used in heat tolerance-inducing agents with the appropriate amounts, to achieve desired protective effects for preventing damage caused by high temperatures.
A person of ordinary skill in the art would have reasonable expectation of success of achieving such modifications since Yamauchi reference has demonstrated high temperature agent comprising various additives such as 2-hexenal are routine and known 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 1-8, 10-12, and 14-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 19/639,137 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims would have been anticipated by the reference claims.
Instant claim 1 is drawn to, a heat tolerance-inducing agent for plants, comprising a carrier composed of an active ingredient including at least one compound having a boiling point or sublimation point of 200°C or lower supported on a porous material.
Reference claim 1 is drawn to, a high-temperature tolerance inducer for plants, comprising a carrier having an active ingredient containing at least one compound having a boiling point or sublimation point of 200°C or lower and a hydrophobic compound having a boiling point exceeding 200°C supported on a porous material.
The differences between the instant claim 1 and the reference claim 1 is that the reference claim includes a hydrophobic compound that has a boiling point exceeding 200°C. well known in the art to be incorporated in the composition.
However, the differences are close enough that they would be anticipated and/or are well within the capabilities of the person of ordinary skill in the art to adjust.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion and Correspondence
No claims are allowed.
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/J.A.E./ Examiner, Art Unit 1616
/SUE X LIU/ Supervisory Patent Examiner, Art Unit 1616
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