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 .
Applicant’s amendment was filed 5/19/2026. Claims 1, 3, 4, 6, 7, 9, 10, 12, 13 and 15 were amended. Claims 2, 5, 8, 11, 14 were cancelled. New claims 16-20 were added. Claims 1, 3, 4, 6, 7, 9, 10, 12, 13 and 15-20 are pending.
Withdrawn rejections
Applicant's amendments and arguments filed 5/19/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn.
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 1, 3, 4, 6, 7, 9, 10, 12, 13 and 15-20 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.
Claim 1 recites “the preparation is configured to increase transcription levels of genes associated with a synthesis pathway of jasmonic acid of corn plants” which is indefinite. Claims 4, 7, 10 and 13 recites “the preparation is configured to increase transcription levels of genes associated with a synthesis pathway of cutin and wax of corn plants” which is indefinite. It is unclear from the specification what the metes and bounds of the terms ‘configured to” are drawn to. The specification states “the fatty acid metabolic pathway is involved in a synthesis process of plant physiological immune substances such as jasmonic acid and physical immune barriers such as cutin and wax” and in samples “a transcriptome sequencing is performed, and an effect of the water emulsion of the present disclosure on the transcription of genes associated with synthesis pathways of cutin, wax and jasmonic acid in metabolic pathways of the corn plants is analyzed [0037-38]. Therefore, it is unclear if transcriptome sequencing is a required step to configure the invention. For the purpose of examination the terms have been treated as inherent properties that come from applying the preparation. Claims 3, 6, 9, 12 and 15-20 are rejected for depending on rejected claims 1, 4, 7, 10 and 13.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/651,700 (herein ‘700). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to the methods of applying higher fatty alcohol preferably selected from dodecanol and cetyl alcohol to corn plants whereas the copending claims are drawn to the use of higher aliphatic alcohol preferably selected from dodecanol and cetyl alcohol for increasing content of compounds in legumes. Therefore, it would have been prima facie obvious to utilize the teachings of ‘700 to include applying high fatty alcohols to corn plants.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/657,707 (herein ‘707). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to methods of applying higher fatty alcohol preferably selected from dodecanol and cetyl alcohol to corn plants whereas the copending claims are drawn to the use of higher aliphatic alcohol preferably selected from dodecanol and cetyl alcohol for increasing content of compounds in solanaceae plants. Therefore, it would have been prima facie obvious to utilize the teachings of ‘707 to include applying high fatty alcohols to corn plants.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/651,711 (herein ‘711). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to methods of applying higher fatty alcohol preferably selected from dodecanol and cetyl alcohol to corn plants whereas the copending claims are drawn to the use of higher fatty alcohol preferably selected from dodecanol and cetyl alcohol for increasing transcription levels in cruciferous plants. Therefore, it would have been prima facie obvious to utilize the teachings of ‘711 to include applying high fatty alcohols to corn plants.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/651,713 (herein ‘713). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to methods of applying higher fatty alcohol preferably selected from dodecanol and cetyl alcohol to corn plants whereas the copending claims are drawn to the use of higher aliphatic alcohol preferably selected from dodecanol and cetyl alcohol for increasing content of compounds in rice or wheat. Therefore, it would have been prima facie obvious to utilize the teachings of ‘700 to include applying high fatty alcohols to corn plants.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1, 3, 4, 6, 7, 9, 10, 12, 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lewis (US 3,778,509; patented December 11, 1973) in view of Peng (CN109874579; published June 14, 2019).
Applicant claims a method for increasing resistance of corn plants to insects comprising applying a preparation comprising a higher fatty alcohol selected from dodecanol, cetyl alcohol or a mixture to corn plants (claim 1).
Applicant claims a method for reducing erosion of pests and diseases in corn plants comprising applying a preparation comprising a higher fatty alcohol selected from dodecanol, cetyl alcohol or a mixture to corn plants (claim 4).
Applicant claims a method for increasing yield of corn plants comprising applying a preparation comprising a higher fatty alcohol selected from dodecanol, cetyl alcohol or a mixture to corn plants (claim 7).
Applicant claims a method for improving drought resistance of corn plants comprising applying a preparation comprising a higher fatty alcohol selected from dodecanol, cetyl alcohol or a mixture to corn plants (claim 10).
Applicant claims a method for improving rust disease resistance of corn plants comprising applying a preparation comprising a higher fatty alcohol selected from dodecanol, cetyl alcohol or a mixture to corn plants (claim 10).
Lewis disclose monohydric alcohols containing 4-12 carbon atoms that are effective in the control of microorganisms which cause disease of plants (abstract). Treating boll rot and other diseases of plants such as cotton and corn with monohydric alcohols with 4-12 carbon atoms is taught which encompasses dodecanol (lauryl alcohol) (column 2, lines 5-30). The primary objective of the invention is to provide improved control of microorganisms responsible for diseases in cotton or other field crops (column 1, lines 62-64). Exemplary alcohols include 1-hexanol, 1-heptano, 1-octanol, 1-nonanol and 1-decanol (column 2, lines 34-53). Treating cotton is exemplified however Lewis also teaches methods of treating cotton disease are also effective in treating corn diseases such as southern leaf blight disease by controlling the microorganism Helminthosporum maydis (column 3, lines 14-24). Water is the preferred liquid carrier along with surfactants selected from polyoxyethylene sorbitan esters (column 3, lines 25-60). Examples 10-18 include polyoxyethylene sorbitan monooleate (Tween 80) and polyoxyethylene sorbitan monolaurate (Tween 20) (column 5, line 53 through column 6, line 63).
Lewis does not specify a method for increasing resistance of corn plants to insects, a method for reducing erosion of pests and diseases in corn plants, a method for increasing yield of corn plants a method for improving drought resistance of corn plants or a method for improving rust disease resistance of corn plants, however Lewis teach methods of controlling microorganisms which are responsible for southern leaf blight disease in corn plants applying solutions and emulsions of the active ingredients by spraying a field at a rate of 50-100 gallons/acre (column 3, lines 14-40). The treated plants exhibited an increase in yield of about 10% (column 6, lines 61-62). Therefore, the above methods are inherently taught since the method steps of application are the same.
Lewis do not specify dodecanol, however C12 fatty alcohol are taught which encompasses dodecanol. However, MPEP 2144.09 states that compounds that are homologs, compounds differing regularly by the successive addition of the same chemical group, e.g. by -CH2- groups, are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ (CCPA 1977). With respect to claims 3, 6, 9, 12 and 15 Lewis do not teach a thickener. It is for this reason that Peng is joined.
Peng discloses a method of preventing and controlling rust disease with 300 parts dodecanol, 8 parts emulsifier, 40 parts thickener and 800 parts water and spraying the formulation on maize (corn). (Example 1).
Both Lewis and Peng are drawn to methods of applying fatty alcohols to treat rust diseases in maize. Therefore, it would have been prima facie obvious combine the teachings of Lewis and Peng use dodecanol, and emulsifier, thickener and water to improve plant health with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of filing to dodecanol on corn because Lewis teach C12 monohydric alcohols are used to control disease and Peng specifies using formulations comprising dodecanol, emulsifier, thickener and water in formulations which control rust diseases in maize.
Response to Arguments
Applicant's arguments filed 5/19/2026 have been fully considered but they are not persuasive.
Applicant first argues that Peng teaches enhancing photosynthesis of plant but inhibiting further spread of pathogenic bacterial whereas the present preparation is used to increase transcription levels of genes associated with a synthesis pathway of jasmonic acid. Applicant further argues that Lewis teaches the aliphatic alcohol can only be used for fungicidal purposes whereas the present invention can increase resistance of the corn plants to insect pests. The Examiner is not persuaded by this argument because Peng and Lewis teach applying dodecanol to corn plants. The discovery of a previously unappreciated property of a prior art composition or a scientific explanation for the prior arts functioning does not render the old composition patentable new to the discoverer. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Applicant further argues Peng and Lewis do not disclose the higher fatty alcohol is one of dodecanol and cetyl alcohol or a mixture of dodecanol and cetyl alcohol because Peng and Lewis do not disclose cetyl alcohol. The Examiner is not persuaded by this argument because dodecanol is taught by both Peng and Lewis. The claims requires “one of dodecanol and cetyl alcohol” which only requires one to be present. Since both Peng and Lewis teach dodecanol the limitations of the claim have been met.
Applicant argues Peng teaches a preparation that comprises a co-emulsifiers and is different from the present inventions. The Examiner is not persuaded by this argument because the comprising language of the claim allows for the inclusion of other ingredients. Applicant further argues Lewis only includes two substances, water and alcohol and does not include an emulsifier or a thickener. Therefore, Applicant argues that the claimed compositions are different from those of the prior art. The Examiner is not persuaded by this argument because Lewis teach that water is the preferred liquid carrier along with surfactants selected from polyoxyethylene sorbitan esters (column 3, lines 25-60). Examples 10-18 include polyoxyethylene sorbitan monooleate (Tween 80) and polyoxyethylene sorbitan monolaurate (Tween 20) (column 5, line 53 through column 6, line 63). Furthermore, Peng discloses a method of preventing and controlling rust disease with 300 parts dodecanol, 8 parts emulsifier, 40 parts thickener and 800 parts water and spraying the formulation on maize (corn). (Example 1). Therefore, one of ordinary skill would have been motivated formulate a compositions comprising dodecanol, water, emulsifiers and thickeners and apply the formulation of corn plants with a reasonable expectation of success.
Claim(s) 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lewis (US 3,778,509; patented December 11, 1973) in view of Peng (CN109874579; published June 14, 2019) as applied to claims 1, 3, 4, 6, 7, 9, 10, 12, 13 and 15 in view of Newman (US 2006/0008495; published January 12, 2006).
Applicant claims a method for increasing resistance of corn plants to insects comprising applying a preparation comprising a higher fatty alcohol selected from dodecanol, cetyl alcohol or a mixture to corn plants (claim 1).
Applicant claims a method for reducing erosion of pests and diseases in corn plants comprising applying a preparation comprising a higher fatty alcohol selected from dodecanol, cetyl alcohol or a mixture to corn plants (claim 4).
Applicant claims a method for increasing yield of corn plants comprising applying a preparation comprising a higher fatty alcohol selected from dodecanol, cetyl alcohol or a mixture to corn plants (claim 7).
Applicant claims a method for improving drought resistance of corn plants comprising applying a preparation comprising a higher fatty alcohol selected from dodecanol, cetyl alcohol or a mixture to corn plants (claim 10).
Applicant claims a method for improving rust disease resistance of corn plants comprising applying a preparation comprising a higher fatty alcohol selected from dodecanol, cetyl alcohol or a mixture to corn plants (claim 10).
The teachings of Lewis and Peng are addressed in the above 103 rejection.
Lewis and Peng do not teach the thickener is methyl cellulose. It is for this reason that Newman is joined.
Newman methods of controlling insects comprising blending water, ester of fatty acid of 10-25 carbon atoms and a low molecular weight alcohol, an emulsifying agent and a thickener (abstract). The emulsifier is selected from polyoxyethylene sorbitan esters and the thickener which exhibit non-Newtonian behavior of high viscosity in aqueous media and low viscosity when subjected to high shear forces such as in the spray application is selected from methylcellulose [0013].
Lewis, Peng and Newman are all drawn to the preparations of alcohol/water based formulations with emulsifiers. Therefore, it would have been prima facie obvious combined the teachings of Lewis, Peng and Newman to include methylcellulose as a thickener with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of filing to combine the teachings of Lewis, Peng and Newman to include methylcellulose as a thickener because Newman teaches that it exhibits low viscosity when applied by spraying.
Conclusion
No claims allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE D JOHNSON whose telephone number is (571)270-3285. The examiner can normally be reached Monday-Friday 9:00 am-5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
DANIELLE D. JOHNSON
Examiner
Art Unit 1617
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