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 .
Drawings
The drawings are objected to because the drawing contains numbers/letters/reference characters that are illegible (37 CFR 1.84(p)(1)) and do not measure at least 0.32 cm (1/8 inch) in height and that are placed on shaded surfaces (37 CFR 1.84(p)(3)). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-13 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 a “use” is not a process, machine, manufacture, or composition of matter (see MPEP 2173.05(q)).
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 1-13 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 1-13 recite a “use” but fail to recite steps and thus are indefinite (see MPEP 2173.05(q)). For purposes of compact prosecution, the claims are interpreted herein as a process comprising a step of applying a preparation of dodecanol and/or cetyl alcohol to a legume.
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) 1-2, 4-5, 7-8, 10, and 12 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Damo et al. (EP 0357559 A2; published 07 March 1990; citations herein to English machine translation made 13 March 2026).
Regarding claims 1, 4, 7, 10, and 12, Damo et al. discloses an aqueous formulation containing lauryl alcohol (i.e., dodecanol, a higher aliphatic alcohol) (claim 3) wherein a seed is treated with the formulation (claims 12-17) wherein the seed is legume or peanut (page 5), which reads on the claimed use of a higher aliphatic alcohol in preparing a preparation for legumes or peanuts wherein the higher alcohol is one of dodecanol and cetyl alcohol or a mixture of dodecanol and cetyl alcohol.
Further regarding claim 1, the recitation of “for increasing a content of lysophosphatidylcholine in legumes, wherein: a use of increasing a quantity of nodules is achieved by increasing the content of lysophosphatidylcholine in the legumes through the higher aliphatic alcohol” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Regarding claim 2, the recitation of “wherein a use of improving a nitrogen fixing capacity of the legumes is achieved by increasing the quantity of nodules of the legumes through the higher aliphatic alcohol” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Further regarding claim 4, the recitation of “for increasing a content of an isoflavone compound in legumes, wherein: the isoflavone compound is 3,9-dihydroxypterocarpan” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Regarding claim 5, the recitation of “wherein a use of increasing a content of phytoalexins in the legumes is achieved by increasing a content of the 3,9-dihydroxypterocarpan in the legumes through the higher aliphatic alcohol” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Further regarding claim 7, the recitation of “for increasing a content of an isoflavone compound in legumes, wherein: the isoflavone compound is calycosin and glycitein” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Regarding claim 8, the recitation of “wherein a use of improving an anti-adversity activity of the legumes is achieved by increasing a content of the calycosin and glycitein in the legumes through the higher aliphatic alcohol” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Further regarding claim 10, the recitation of “for improving a germination rate and a germination potential, and shortening a germination time of peanuts” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Further regarding claim 12, the recitation of “for improving a drought resistance of legumes, wherein a use of improving the drought resistance of the legumes is achieved through the preparation containing the higher aliphatic alcohol by increasing a transcriptional level of genes related to the phenylpropanoid metabolic pathway, increasing a transcriptional level of genes related to the isoflavone biosynthetic pathway and increasing a content of an isoflavone compound in the legumes” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Damo et al.
Regarding claims 1, 4, 7, 10, and 12, Damo et al. discloses an aqueous formulation containing lauryl alcohol (i.e., dodecanol, a higher aliphatic alcohol) (claim 3) wherein a seed is treated with the formulation (claims 12-17) wherein the seed is legume or peanut (page 5), which reads on the claimed use of a higher aliphatic alcohol in preparing a preparation for legumes or peanuts wherein the higher alcohol is one of dodecanol and cetyl alcohol or a mixture of dodecanol and cetyl alcohol.
Further regarding claim 1, the recitation of “for increasing a content of lysophosphatidylcholine in legumes, wherein: a use of increasing a quantity of nodules is achieved by increasing the content of lysophosphatidylcholine in the legumes through the higher aliphatic alcohol” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Regarding claim 2, the recitation of “wherein a use of improving a nitrogen fixing capacity of the legumes is achieved by increasing the quantity of nodules of the legumes through the higher aliphatic alcohol” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Further regarding claim 4, the recitation of “for increasing a content of an isoflavone compound in legumes, wherein: the isoflavone compound is 3,9-dihydroxypterocarpan” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Regarding claim 5, the recitation of “wherein a use of increasing a content of phytoalexins in the legumes is achieved by increasing a content of the 3,9-dihydroxypterocarpan in the legumes through the higher aliphatic alcohol” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Further regarding claim 7, the recitation of “for increasing a content of an isoflavone compound in legumes, wherein: the isoflavone compound is calycosin and glycitein” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Regarding claim 8, the recitation of “wherein a use of improving an anti-adversity activity of the legumes is achieved by increasing a content of the calycosin and glycitein in the legumes through the higher aliphatic alcohol” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Further regarding claim 10, the recitation of “for improving a germination rate and a germination potential, and shortening a germination time of peanuts” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Further regarding claim 12, the recitation of “for improving a drought resistance of legumes, wherein a use of improving the drought resistance of the legumes is achieved through the preparation containing the higher aliphatic alcohol by increasing a transcriptional level of genes related to the phenylpropanoid metabolic pathway, increasing a transcriptional level of genes related to the isoflavone biosynthetic pathway and increasing a content of an isoflavone compound in the legumes” is presumed inherent in the method of Damo et al. as discussed above comprising applying the aqueous formulation containing dodecanol to a legume or peanut seed, given that such method and composition used therein is substantially identical to the claimed method and composition used therein (see, e.g., MPEP 2112(V) and 2112.01(I)), and given that compositions that are physically the same must have the same properties per MPEP 2112.01(II).
Regarding claims 3, 6, 9, 11, and 13, Damo et al. further discloses that the formulation is a water-in-oil or oil-in-water emulsion (page 1) and that the formulation can include customary auxiliaries such as emulsifiers and thickeners (page 2).
Further regarding claims 3, 6, 9, 11, and 13, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Damo et al. as discussed above and to make the aqueous dodecanol formulation of Damo et al. as discussed above as a water emulsion with emulsifiers and thickeners as customary auxiliaries therein, and to apply such formulation to a legume or peanut seed as discussed above, with a reasonable expectation of success.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617