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 .
Claims 1-15 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/1/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to the “use” of a higher fatty alcohol and does not claim a process, machine, manufacture or composition of matter.
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 1-15 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.
Claims 1, 4, 7, 10 and 13 recites the use of fatty alcohols without setting form any steps involved in the process. Therefore, it is unclear if the claims are drawn to a process or a composition. Furthermore, the scope of the term “higher fatty alcohol” is unclear. The specification does not provide a standard for ascertaining the requisite degree of what “higher fatty alcohol” encompasses and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention because the only alcohols disclosed in the specification are dodecanol and cetyl alcohol. Claims 2, 3, 5, 6, 8, 9, 11, 12, 14 and 15 are rejected for depending on rejected base claims.
Claims 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: how the higher fatty alcohol is used to effect corn plants to prevent insect pests, reduce erosion, increase yield, drought resistance or rust disease resistance.
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. 18/657,700 (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 use of higher fatty alcohol preferably selected from dodecanol and cetyl alcohol for transcription levels of genes associated with cutin and wax in 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 use of the same alcohols in 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 the use of higher fatty alcohol preferably selected from dodecanol and cetyl alcohol for transcription levels of genes associated with cutin and wax in 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 use of the same alcohols in 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. 18/657,711 (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 the use of higher fatty alcohol preferably selected from dodecanol and cetyl alcohol for transcription levels of genes associated with cutin and wax in 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 use of the same alcohols in 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. 18/657,713 (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 the use of higher fatty alcohol preferably selected from dodecanol and cetyl alcohol for transcription levels of genes associated with cutin and wax in 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 use of the same alcohols in 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 § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-15 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Peng (CN109874579; published June 14, 2019).
Applicant claims the use of a higher fatty alcohols in preparing a preparation, preferably wherein the preparation comprises the higher fatty alcohol, an emulsifier, a thickener and water.
Example 1 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)
Claim(s) 1, 4, 7, 10 and 13 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Lewis (US 3,778,509; patented December 11, 1973).
Applicant claims the use of a higher fatty alcohols in preparing a preparation (claims 1, 4, 7, 10 and 13).
Lewis disclose monohydric alcohols containing 4-12 carbon atoms that are effective in the control of microorganisms which cause disease of plants (abstract). Examples 1-15 show formulations comprising alcohols including 1-hexanol, 1-octanol and 1-decanol with water and surfactants exhibit inhibitory effects on Helminthosporum maydis which causes southern blight in corn (Table 1; column 5, lines 18-65).
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) 2, 5, 8, 11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lewis (US 3,778,509; patented December 11, 1973).
Applicant claims the use of a higher fatty alcohols in preparing a preparation (claims 1, 4, 7, 10 and 13).
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). 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, polyoxyethylene alcohols, alkylarylpolyether alcohols, phthalic glycerol alkyl resins, ethoxylated imidazoline, decanoic acid, diglycol oleate, polyether sulfonates, and alkylaryl sulfonates and mixtures thereof and are preferably formulated emulsions (column 3, lines 25-60).
Lewis do not specify dodecanol or cetyl alcohol (a C16 alcohol), 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).
Therefore, it would have been prima facie obvious combine the teachings of Lewis and use dodecanol or cetyl alcohol with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of filing to use higher fatty alcohols on corn because Lewis teach C12 monohydric alcohols are used to control rot disease in corn which encompasses dodecanol.
Claim(s) 3, 6, 9, 12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lewis (US 3,778,509; patented December 11, 1973) as applied to claims 1, 2, 4, 5, 7, 8, 10, 11, 13 and 14 in view of White (US 5,288,486; patented February 22, 1994).
Applicant claims the use of a higher fatty alcohols in preparing a preparation.
The teachings of Lewis are addressed in the above 103 rejection.
Lewis does not teach a thickener. It is for this reason that White is joined.
White teach that alcohol evaporation rate of alcohol-based formulations can be reduced by the addition of alcohol-soluble viscosity agents (abstract). Adding the viscosity agents thicken the alcohol/water compositions and retard the rate of evaporation and the agents are preferably selected from hydroxypropylcellulose polymers, polyvinyl pyrrolidones and polymeric quaternary ammonium salts of hydroxyethyl cellulose reacted with a trimethyl ammonium substituted epoxide (column 1, lines 30-65).
Both Lewis and White are drawn to the preparations of alcohol/water based formulations. Therefore, it would have been prima facie obvious combined the teachings of Lewis and White to include thickeners 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 and White to include thickeners because White teaches adding viscosity agents that thicken the formulations retards the rate at which alcohol evaporates from the formulations.
Conclusion
Claims 1-15 have been rejected.
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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DANIELLE D. JOHNSON
Examiner
Art Unit 1617
/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611