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 .
Election/Restrictions
Applicant's election with traverse of Group II (claims 10-17) drawn to a method of reducing the effect of a pathogen on plants in the reply filed on May 7th, 2026 is acknowledged. The traversal is on the ground that the first claims of Groups II and III depended on claim 1 of Group I, as such the inventions of groups I-II are related to one another. This is not found persuasive because the method of group IIClaims 1 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 2 and 3 were cancelled by the applicant.
The requirement is still deemed proper and is therefore made FINAL.
The applicant has introduced new claims 21 and 22, which are included in of Group II, drawn to a method of reducing the effect of a pathogen on plants.
The applicant elected with traverse a Tomato brown rugose fruit virus (ToBRFV) for species A (claim 12), Candidatus Phytoplasma solani bacteria for species B (claim 13), and Candidatus Phytoplasma solani bacteria on grape vines, lavender, potato plants, tomato plants, aubergine plants, pepper plants and tobacco plants for species C (claim 14) in the reply filed on May 7th, 2026 is acknowledged. With respect to the election of species, the applicant submits that the plant cells react to any kind of virus. This is not persuasive because each species has different structural feature and could produce a different effect on the plant. Alternatives to the species elected, recited in claims 12-14, are withdrawn as being drawn to non-elected species.
Claims 10-17, 21, and 22 are pending and were examined on the merits.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on applications FR2110751 and FR2110752 filed in France on October 11th, 2021. It is noted, however, that applicant has not filed a certified copy of the applications FR2110751 and FR2110752 application as required by 37 CFR 1.55.
Drawings
The drawings were received on April 11th, 2024 and August 13th, 2024. These drawings are acceptable.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The use of the terms Osiryl, INRA, Eurion, Berthoud, Cosmos, Roth, Sigma-Aldrich, Memmert, PROLABO, Stericup, Millipore, Whatman, Fisher Scientific, GraphPad, and Prism; each of which is a trade name or a mark used in commerce, has been noted in this application. Each term should be accompanied by the generic terminology; furthermore, 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.
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.
Claim Objections
Claim 10 is objected to because of the following informalities: claim 10 is dependent upon claim 1. Appropriate correction is required. The applicant is notified of the following informalities in claim 1: the term “defences” should be revised to “defenses” to conform with American English spelling.
Claim 11 is objected to because of the following informalities: the term "defence" should be revised to "defense" to conform with American English spelling. Appropriate correction is suggested.
Claims 13 and 14 are objected to because of the following informalities: the scientific names of species of organisms should be italicized for formality. Appropriate correction is suggested.
Claim 14 is objected to because of the following informality: the list "grape vines, lavender, potato plants, tomato plants, aubergine plants, pepper plants and tobacco plants" should be amended to have a comma after "pepper plants", for correct punctuation: "grape vines, lavender, potato plants, tomato plants, aubergine plants, pepper plants, and tobacco plants". Appropriate correction is suggested.
Claim 14 is objected to because of the following informality: the term "ormamental" (line 10 from the top of claim 14) should be changed to "ornamental" for correct spelling. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: the term "phytophtora" (line 6 from the bottom of claim 14) should be changed to "Phytophthora" for correct capitalization and spelling of the genus name; the term "Phytophtora" should be changed to "Phytophthora" throughout claim 14 for correct spelling of this genus name. Appropriate correction is required.
Claims 16 and 17 are objected to because of the following informalities: the term "grammes" should be revised to "grams" to conform with American English spelling. Appropriate correction is suggested.
Claims 16 and 17 are objected to because of the following informalities: the term "litre" should be revised to "liter" to conform with American English spelling. Appropriate correction is suggested.
Claim 21 is objected to because of the following informalities: the term "saif" should be changed to "said" for correct spelling. Appropriate correction is required.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The sentence “Elicitor composition stimulating the defences of a plant or tree against a pathogen … wherein said plant or tree is a strain compatible with said pathogen” (instant claim 1, from which instant claim 10 depends), is interpreted as using the term “compatible” to clarify that the plant strain is sensitive to the pathogen (instant specification, Example 9) .
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.
Claims 21 and 22 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 21 recites the limitation "said virus". There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation "said virus". There is insufficient antecedent basis for this limitation in the claim.
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 10 and 13-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 7, 8, 17, 19, and 20 of U.S. Patent No. US 12507698 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following overlapping subject matter.
Instant claim 10 (dependent from claim 1) and reference claims 1-3, 17, 19, and 20 (in view of reference specification paragraph (14)) both recite a method of reducing the effects of a pathogen on a plant or tree comprising a step of applying a composition stimulating the defenses of a plant or tree against a pathogen, said composition comprising at least one aqueous extract of at least one of the following source plants: Eruca sativa, Diplotaxis, Erucastrum, Bunias genera, Cakile, wherein said plant or tree is a strain compatible with said pathogen. It would be obvious to one of skill in the art that said plant or tree is a strain compatible with said pathogen, otherwise the plant strain would not be sensitive to the pathogen and the responses of the plant strain to the pathogen would not be termed “defences” (instant claims 1 and 10; specification, Example 9).
Instant claim 13 and reference claim 5 recite the method as recited above (instant claim 10, and reference claim 1 in view of in view of reference specification paragraph (14)) applied to reduce the effects of an attack by Candidatus Phytoplasma solani bacteria.
Instant claim 14 and reference claim 5 recite the method as recited above (instant claim 10, and reference claim 1 in view of in view of reference specification paragraph (14)) applied to reduce the effects of a bacterium host combination of Candidatus Phytoplasma solani bacteria on grape vines, lavender, potato plants, tomato plants, aubergine plants, pepper plants, and tobacco plants.
Instant claim 15, depending from instant claim 10; and reference claims 1, 17, 19, and 20 (in view of reference specification paragraph (14)); both recite foliar application of the same composition (see the overlapping subject matter for instant claim 10, discussed above).
Instant claim 16 and reference claim 7 both recite the method of instant claim 10 or reference claim 1 (in view of reference specification paragraph (14)), wherein the application on the plant or tree is achieved with a dilution of the composition in water encompassing a range between 2 g/L and 150 g/L expressed in grams of plants on which the extraction was carried out per liter of product.
Instant claim 17 and reference claim 8 both recite the method of instant claim 10 or reference claim 1 (in view of reference specification paragraph (14)), wherein the application on the plant or tree is achieved with a dilution of the composition in water encompassing a range between 5 g/L and 70 g/L expressed in grams of plants on which the extraction was carried out per liter of product.
Applicant assistance is requested in reviewing possible species that could be encompassed in a double patenting rejection based on the arguments presented currently. Such species could include, but are not necessarily limited to, Xylella fastidiosa (instant claim 13; reference claims 5 and 6), and Xylella fastidiosa on myrtle-leaf milkwort, grape vines, olive trees, citrus trees, oleander, almond trees, coffee trees, peach trees and stone fruit trees, oak trees, lavender, rosemary, and broom (instant claim 14; reference claims 5 and 6).
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.
Claims 10 and 13-17 are rejected under 35 U.S.C. 103 as being obvious over Martinez-Barbreau (WO 2018234690 A1).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). The explanation of obviousness is presented below
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claim 10 recites “A method of reducing the effects of a pathogen on a plant or tree comprising a step of applying the elicitor composition of claim 1” where the elicitor composition of claim 1 is recited as “Elicitor composition stimulating the defences of a plant or tree against a pathogen, said composition comprising at least one aqueous extract of at least one of the following source plants: Eruca sativa, Diplotaxis, Erucastrum, Bunias genera, Cakile, wherein said plant or tree is a strain compatible with said pathogen”. Claim 13 recites “The method of claim 10, applied to reduce the effects of an attack by one of the following bacteria:
Xylella fastidiosa
Pseudomonas syringae pv actinidiae bacteria
Xantomonas arboricola pv juglandis
Xanthomonas arboricola pv. Pruni bacteria
Phytoplasma bacteria
Candidatus Phytoplasma pyri
Candidatus Phytoplasma solani bacteria”
Claim 14 recites “The method of claim 10, applied to reduce the effects of one of the following bacterium-host combinations:
Xylella fastidiosa bacteria on myrtle-leaf milkwort, grape vines, olive trees, citrus trees, oleander, almond trees, coffee trees, peach trees and stone fruit trees, oak trees, lavender, rosemary, or broom,
Pseudomonas syringae pv actinidiae bacteria on plants of the Actinidia genus,
Xantomonas arboricola pv juglandis bacteria on walnut trees,
Xanthomonas arboricola pv. Pruni bacteria on Prunus spp., and preferably the following group of fruit/nut trees: apricot trees, almond trees, cherry trees, peach trees, plum trees, P. salicina, cherry laurel and other exotic or omamental Prunus species, including P. davidiana and P. laurocerasus,
Pear Decline Phytoplasma bacteria or Candidatus Phytoplasma pyri on pear trees,
Candidatus Phytoplasma solani bacteria on grape vines, lavender, potato plants, tomato plants, aubergine plants, pepper plants and tobacco plants,
Plasmapora viticola fungus on grape vines, or Phytophtora infestans on potato plants and tomato plants, or phytophtora citrophtora on citrus trees, or Phytophtora cactorum on pear trees and apple trees, or Bremia lactucae on artichokes. All these pathogenic fungi are responsible for mildew, or
oidium-type fungi such as Podosphaera pannosa on rose bushes, and Erysiphe necator, formerly Uncinula necator, on grape vines, and oidia on tomato plants, lettuces, cucumbers, strawberry plants, raspberry plants, currant bushes, peach trees, pear trees, privet, carnations”.
Claim 15 recites “The method of claim 10, wherein the application of the elicitor composition is a foliar application on the plant or tree”. Claim 16 recites “The method of claim 10, wherein the application on said plant or tree is achieved with a dilution of the composition in water between 2 g/L and 2000 g/L expressed in grammes of source plant on which the extraction was carried out per litre of product”. Claim 17 recites “The method of claim 10, wherein the application on said plant or tree is achieved with a dilution of the composition in water between 5 g/L and 200 g/L expressed in grammes of source plant on which the extraction was carried out per litre of product”.
Martinez-Barbreau recites the following technical area of their invention:
“The present invention relates to a use of a rocket plant extract for stimulating plant or tree defenses, and a composition and methods thereof. The present invention aims at reducing the effects of an attack of a pathogenic element on a plant or a tree, to, at least, allow the plant or the tree to continue to grow correctly despite this infection, by surpassing the disease that is, allowing the plant or tree to grow despite the pathogen, reducing or eliminating the impact of the pathogen. Rocket plant extract may also, in some uses, allow the plant to eradicate certain pathogens. This use can be curative or preventive” (instant claim 10).
Martinez-Barbreau recites using an extract of specific plants to stimulate the defenses of plants against a pathogen:
“Use of an extract of at least one part of Roquette plants, preferably chosen from the group of Roquette plants of the Eruca genus (Eruca sativa, Eruca vesicaria, etc.), Diplotaxis (Diplotaxis erucoides, Diplotaxis tenuifolia, Diplotaxis muralis ...), Bunias (Bunias erucago, Bunias orientalis, ...), Erucastrum (Erucastrum nasturtiifolium, Erucastrum incanum ...) and Cakile, to stimulate the defenses of plants or trees and reduce the effects: … the bacterium Candidatus Phytoplasma solani on vine, lavender, potato, tomato, eggplant, pepper and tobacco” (claim 1; instant claims 10, 13, and 14).
Martinez-Barbreau further recites preparing an aqueous extract of the rocket plant of the genus Eruca (claim 13; instant claim 10). Although Martinez-Barbreau does not explicitly recite “Elicitor composition stimulating the defences of a plant or tree against a pathogen … wherein said plant or tree is a strain compatible with said pathogen” (instant claim 1, from which instant claim 10 depends), it would be obvious to one of skill in the art that said plant or tree is a strain compatible with said pathogen, otherwise the plant strain would not be sensitive to the pathogen and the responses of the plant strain to the pathogen would not be termed “defences” (instant claims 1 and 10; specification, Example 9).
Martinez-Barbreau further recites foliar application: “Use according to one of claims 1 to 9, wherein the application to the plant or the tree is by foliar spraying, watering the soil, drip, use in hydroponics, seed treatment and / or coating seeds” (claim 10; instant claim 15).
Martinez-Barbreau further recites a range of dilution ratios for the extraction mixture: “Use according to one of claims 1 and 10, wherein the application to the plant or the tree is with a dilution in water of the composition between 2 g / L and 150 g / L expressed in grams of plants on which extraction was carried out per liter of product” (claim 11; instant claim 16).
Martinez-Barbreau further recites another range of dilution ratios for the extraction mixture: “Use according to one of claims 1 to 11, wherein the application to the plant or the tree is with a dilution in water of the composition between 5 g / L and 70 g / L expressed in grams of plants on which extraction was carried out per liter of product” (claim 12; instant claim 17).
It would be obvious to one of skill in the art to arrive at the applicant’s invention as claimed in instant claims 10 and 13-17 because of Martinez-Barbreau discloses a use of a rocket plant extract for stimulating plant or tree defenses as in instant claims 10 and 13-17; and the limitation that said plant or tree is a strain compatible with said pathogen, otherwise the plant strain would not be sensitive to the pathogen and the responses of the plant strain to the pathogen would not be termed “defences”.
Allowable Subject Matter
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claims 11 and objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert F Spaine whose telephone number is (571)272-9099. The examiner can normally be reached 8:00 AM - 4:00 PM United States Eastern Time, Monday-Friday.
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, Anand Desai can be reached at (571) 272-0947. 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.
/R.F.S./Examiner, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
Prosecution Insights