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
1. Claims 1-10 are pending and under examination on the merits.
Election/Restrictions
2. The Office acknowledges receipt of Applicant’s restriction election filed March 09, 2026. Applicant elects Group I, claims 1-4, drawn to a “use” of a higher fatty alcohol in preparation for increasing transcription of genes related to a phenylpropanoid metabolic pathway to promote lignin synthesis in rice or wheat, with traverse.
In traversing the requirement for restriction, Applicant argues primarily that the claims of the instant application are based on the same core inventive concept and that the technical effects of Groups I-III are inherently linked biological phenomena resulting from fatty alcohol-induced stimulation of the phenylpropanoid metabolic pathway to promote lignin synthesis.
Applicant’s argument is persuasive, and the restriction requirement is rescinded. As stated in Applicant’s remarks dated 03/09/2026, the technical effects of Group I (i.e., lignin synthesis), Group II (i.e., improved storage stability), and Group III (i.e., increased yield) are inherent effects from the increased lignin synthesis resulting from fatty alcohol treatment (p. 02, final paragraph beginning “The above three technical effects…”). Accordingly, claims 1-10 will be examined herein.
Priority
3. This application is a continuation of PCT/CN2021/128781 filed on November 04, 2021.
Information Disclosure Statement (IDS)
4. The Information Disclosure Statement (IDS) submitted on December 23, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered to the extent of the English translations provided.
Claim Objections
5. Claims 1-4 and 8-10 are objected to for the following reasons:
Applicant is advised that should claim 1 be found allowable, claim 8 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. Applicant states the technical effects resulting from treating rice or wheat with compositions comprising higher fatty alcohols are inherent and cannot be separated (Applicant’s remarks dated 03/09/2026; p. 01; p. 02); thus, the induction of phenylpropanoid metabolism in response to exposure to higher fatty alcohols, and the resulting physiological changes produced thereby (e.g., increased lignin synthesis, improved storage stability, increased yield, etc.) are simply properties inherent to rice or wheat plants treated with fatty alcohols. Therefore, claim 8 simply recites a feature inherent to claim 1, to which claim 1 is silent. Furthermore, Applicant explicitly states that the claims of the present application are not distinct invention (Applicant’s remarks dated 03/09/2026; p. 02). See MPEP § 608.01(m).
Claim 4 contains several grammatical and/or typographical errors. Several articles appear to be missing from the claim; it is recommended Applicant insert the article “the” before “fatty alcohol”, the article “an” before “emulsifier”, and the article “a” before “thickener”, if appropriate.
Dependent claims are included
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
6. 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.
7. Claims 1-2, 5, and 8 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.
The metes and bounds of claims 1-10 are indefinite because it is unclear if the “use” of a higher fatty alcohol is to be interpreted as a process, machine, manufacture, or composition of matter. It is unclear if the claims are directed to a method and if the recitation of “in preparing a preparation” recites an intended use or an active method step. Likewise, the metes and bounds of claims 1, 5, and 8 are indefinite because it is unclear if the claims are limited to a “use” of a fatty alcohol in “preparing a preparation” or if the claims are directed to the “use” of a fatty alcohol to promote lignin synthesis (claim 1), storage stability (claim 5), or yield (claim 8). For the purpose of compact prosecution, “use of a higher fatty alcohol” will be herein interpreted to comprise a process and/or method, and the claims are interpreted to be directed to methods and/or processes comprising the “use” of a fatty alcohol to promote lignin synthesis (claim 1), storage stability (claim 5), or yield (claim 8). Applicant is required to clarify the intended recitations.
The metes and bounds of claims 1, 5, and 8 are indefinite because it is unclear how one of ordinary skill in the art would “use” a higher fatty alcohol to achieve the desired effect. If the claims are directed to a method and/or process, it is recommended Applicant amend the claims to clearly define the steps by which one of ordinary skill would “use” the recited fatty alcohol to achieve the desired effect. In what way would the alcohol be applied to the rice and/or wheat to achieve the desired effect?
The metes and bounds of claims 1, 5, and 8 are indefinite because the recitation of “higher fatty alcohols” is unclear. Though fatty alcohols are well-known in the art, “higher fatty alcohols” is not a standardized term or phrase in the art and Applicant provides no definition for term or phrase. As such, it is unclear what traits define higher fatty alcohols in comparison to fatty alcohols. Can “higher fatty alcohols” can be distinguished from fatty alcohols? It is recommended Applicant amend the claims to more clearly define the recited fatty alcohols; Applicant is reminded that no new matter may be added.
Dependent claims are included.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
8. 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.
9. Claims 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter and is not supported by either a specific and substantial asserted utility or a well-established utility.
The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims recite a “use” of a higher fatty alcohol as opposed to a process, machine, manufacture, or composition of matter. See MPEP 2106.
As stated above in the rejection of the claims under 35 U.S.C. 112(b), it is unclear if the “use” of a fatty alcohol is to be interpreted as a process, machine, manufacture, or composition of matter. Therefore, the claims are not clearly directed to statutory subject matter. Furthermore, it is unclear if the claims are directed to a “use” for “preparing a preparation” or a “use” for promoting lignin synthesis (claim 1), storage stability (claim 5), or yield (claim 8) and the claims do not recite any clear method steps to define any process for achieving the desired effects. Therefore, the claims also lack any specific and substantial asserted utility or a well-established utility.
Claim Rejections - 35 USC § 112(a)
10. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL. —The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Enablement Rejections
11. Claims 1-10 are also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a substantial asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
Written Description Rejections
12. Claims 1-2, 5, and 8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1, 5, and 8, Applicant has not described a representative number of fatty alcohols sufficient to increase transcription of genes related to a phenylpropanoid metabolic pathway in rice or wheat to reasonably convey possession of the claimed invention commensurate in scope with the claims.
The independent claims encompass any and all fatty alcohols that induce transcription of phenylpropanoid metabolism. The claims are only limited to fatty alcohols that induce transcription of phenylpropanoid metabolism genes in wheat or rice. The limitation regarding fatty alcohols that induce transcription of phenylpropanoid metabolism genes in wheat or rice is broad and lacks adequate written description.
Applicant describes aqueous emulsions comprising dodecyl and/or cetyl alcohol, an emulsifier, a thickener, and water (Examples 1-3) and the induction of phenylpropanoid metabolism genes, increased yield, increased plant height, increased lodging resistance, and improved storage stability in rice (Examples 4 and 6-7; Tables 2 and 4-6) and/or wheat (Examples 5 and 8-9; Tables 3 and 7-9) treated with said emulsions[0039],[0048]. The state of the art (Mudge, S. The Soap and Detergent Association. 2005;132:1-141 (U)) is well-developed with regard to the structure and identification of fatty alcohols and indicates the presence of at least 26 such species (p. 08, Table 1.1; p. 09, first partial paragraph; pp. 34-36, Table 3.1). However, the state of the art is poorly developed with regard to the effects of fatty alcohol treatment on phenylpropanoid metabolism and/or lignin synthesis. Though Applicant provides a list of phenylpropanoid metabolism genes induced by treatment with dodecyl and/or cetyl alcohol (p. 06, Table 2; p. 08, Table 3), Applicant provides no guidance with respect to which, if any, phenylpropanoid metabolism genes are induced upon the treatment of rice or wheat with fatty alcohols other than dodecyl alcohol and cetyl alcohol (e.g., stearyl or lignoceryl alcohols). Given the lack of guidance from both Applicant and the prior art, one of ordinary skill in the art could not predict which fatty alcohols induce transcription of phenylpropanoid metabolism genes besides the two species disclosed by Applicant. Because the claims encompass fatty alcohols that are not predictably functional and are not described by Applicant, the specification does not describe species commensurate in with the full scope of the encompassed alcohols.
MPEP § 2163 states that the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. A “representative number of species” means that the species which are adequately described are representative of the entire genus. See, e.g., AbbVie Deutschland GMBH v. Janssen Biotech, 759 F.3d 1285, 111 USPQ2d 1780 (Fed. Cir. 2014). When there is substantial variation within a genus, as here in which the genus comprises over 26 distinct classes of alcohol, one must describe a sufficient variety of species to reflect the variation within the genus. Two fatty alcohols sufficient to induce transcription of phenylpropanoid metabolism genes does not provide adequate written description for all such fatty alcohols.
Accordingly, there is lack of adequate written description to inform a skilled artisan that Applicant was in possession of the claimed invention at the time of filing.
Claim 2 does not address or limit the recitation regarding all fatty alcohols and therefore, also lacks adequate written description.
Claim Rejections - 35 USC § 102
13. 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.
14. Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McKnight et al. (WO-2013/043678, published 03/28/2013 (Applicant’s IDS)).
Regarding claim 1, McKnight teaches the application of pesticidal and/or herbicidal agricultural compositions including fatty alcohol surfactants, emulsifiers, thickeners, and water to a wide range of crop species including rice and wheat[00011], [00060], [00064], [000184], [000187], [000195].
McKnight is silent to phenylpropanoid metabolism and lignin synthesis.
However, an inherent characteristic to which the prior art is silent does not become patentable upon its future discovery or disclosure. See MPEP 2112. The claims are not limited to and do not recite any genetically modified rice or wheat plants; and the induction of the phenylpropanoid metabolic pathway in response to exposure to higher fatty alcohols does not result from any modification induced by Applicant and/or described by Applicant’s disclosure. Furthermore, Applicant admits the application of an aqueous emulsion containing higher fatty alcohols increases the transcription of phenylpropanoid metabolism genes in rice and wheat, which directly leads to increased lignin synthesis and synchronously achieves three traits: improved mechanical strength and lodging resistance, improved storage stability, and increased yield (Applicant’s remarks dated 03/09/2026, p. 02). Accordingly, Applicant states the technical effects resulting from treating rice or wheat with compositions comprising higher fatty alcohols are inherent and cannot be separated (Applicant’s remarks dated 03/09/2026; p. 02); thus, the induction of phenylpropanoid metabolism in response to exposure to higher fatty alcohols, and the resulting physiological changes produced thereby (e.g., increased lignin synthesis, improved storage stability, increased yield, etc.) are simply properties inherent to rice or wheat plants treated with fatty alcohols (p. 01). Therefore, even though McKnight is silent with respect to lignin synthesis and phenylpropanoid metabolism, such synthesis is inherent to the fatty alcohol surfactant-treated rice and wheat plants disclosed therein and an inherent characteristic to which the prior art is silent does not become patentable upon its future discovery or disclosure.
Regarding claim 1, in teaching the application of a composition comprising fatty alcohols to rice and wheat (see disclosure of McKnight as described above), McKnight anticipates the use of a higher fatty alcohol in preparing a preparation for increasing transcription level of genes related to a phenylpropanoid metabolic pathway in rice or wheat, wherein the higher fatty alcohol is used to promote lignin synthesis in rice or wheat by increasing the transcription level of genes related to the phenylpropanoid metabolic pathway in rice or wheat.
Regarding claim 2, in addition to the teachings discussed above, McKnight teaches wherein the higher fatty alcohol improves lodging resistance (i.e., plant/stalk/stem height) of the rice or wheat. As stated above, any effect resulting from the treatment of rice or wheat with fatty alcohols (i.e., lodging resistance) is an inherent feature to the treatment of wheat and rice with higher fatty alcohols.
Regarding claims 3-4, in addition to the teachings discussed above, McKnight teaches the application of pesticidal and/or herbicidal agricultural compositions including fatty alcohol surfactants, emulsifiers, thickeners, and water to a wide range of crop species including rice and wheat, wherein the fatty alcohols comprise lauryl alcohol, which is also known as dodecyl alcohol, and/or cetyl alcohol[00011], [00060], [00064], [000184], [000187], [000195].
Regarding claim 5, in teaching the application of a composition comprising fatty alcohols to rice and wheat (see disclosure of McKnight as described above), McKnight anticipates a use of a higher fatty alcohol in preparing a preparation for increasing transcription level of genes related to a phenylpropanoid metabolic pathway in rice, wherein the higher fatty alcohol is used to improve storage stability in rice or wheat by increasing the transcription level of genes related to the phenylpropanoid metabolic pathway in rice.
Regarding claims 6-7, in addition to the teachings discussed above, McKnight teaches agricultural compositions including fatty alcohol surfactants, emulsifiers, thickeners, and water wherein the fatty alcohols comprise lauryl alcohol and/or cetyl alcohol[00060].
Regarding claim 8, in teaching the application of a composition comprising fatty alcohols to rice and wheat (see disclosure of McKnight as described above), McKnight anticipates a use of a higher fatty alcohol in preparing a preparation for increasing transcription level of genes related to a phenylpropanoid metabolic pathway in rice or wheat, wherein the higher fatty alcohol is used to yield in rice or wheat by increasing the transcription level of genes related to the phenylpropanoid metabolic pathway in rice or wheat.
Regarding claims 9-10, in addition to the teachings discussed above, McKnight teaches agricultural compositions including fatty alcohol surfactants, emulsifiers, thickeners, and water wherein the fatty alcohols comprise lauryl alcohol and/or cetyl alcohol[00060].
Accordingly, the claimed invention is anticipated by the prior art.
15. Claims 1-2, 5, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Naeem et al. (Journal of Plant Interactions. 2012; 7(2):129-142 (Applicant’s IDS)).
Regarding independent claims 1, 5, and 8, Naeem discloses the application of a composition comprising triacontanol, a long-chain fatty alcohol known to increase growth and yield of plants generally rice and wheat (Abstract).
Naeem is silent to phenylpropanoid metabolism and lignin synthesis.
However, the claims are not limited to and do not recite any genetically modified rice or wheat plants. Furthermore, the induction of the phenylpropanoid metabolic pathway in response to exposure to higher fatty alcohols is native to the recited plants and does not result from any recited modification. As admitted in Applicant’s remarks dated 03/09/2026, the application of an aqueous emulsion containing higher fatty alcohols significantly increases the transcription level of rate-limiting enzyme genes related to lignin synthesis in the phenylpropanoid metabolic pathway of rice/wheat, which directly leads to enhanced lignin synthesis, which synchronously achieves three traits: improved mechanical strength and lodging resistance, improved storage stability, and increased yield (p. 02). As agreed by Applicant, the technical effects resulting from treating rice or wheat with compositions comprising higher fatty alcohols cannot be separated (Applicant’s remarks dated 03/09/2026; p. 02). Thus, the induction of phenylpropanoid metabolism in response to exposure to higher fatty alcohols, and the resulting physiological changes produced thereby (e.g., increased lignin synthesis, improved storage stability, increased yield, etc.) are simply properties inherent to rice or wheat plants treated with fatty alcohols (e.g., triacontanol). Though Naeem is silent with respect to lignin synthesis and phenylpropanoid metabolism, such synthesis is inherent to the triacontanol-treated rice and wheat plants disclosed therein and an inherent characteristic to which the prior art is silent does not become patentable upon its future discovery or disclosure. See MPEP 2112.
Therefore, in teaching the application of a composition comprising triacontanol to rice and wheat (see disclosure of Naeem as described above), Naeem anticipates a use of a higher fatty alcohol in preparing a preparation for increasing transcription level of genes related to a phenylpropanoid metabolic pathway in rice or wheat, wherein the higher fatty alcohol is used to promote lignin synthesis (claim 1), improve storage stability (claim 5), and increase yield (claim 8) in rice or wheat by increasing the transcription level of genes related to the phenylpropanoid metabolic pathway in rice or wheat.
Regarding claim 2, in addition to the teachings discussed above, Naeem teaches wherein the higher fatty alcohol improves lodging resistance (i.e., plant/stalk/stem height) of the rice or wheat (p. 133, Table 1). Furthermore, as stated above, said effect on lodging resistance is an inherent feature to the treatment of wheat and rice with higher fatty alcohols.
Accordingly, the claimed invention is anticipated by the prior art.
Conclusion
16. No claim is allowed.
Examiner’s Contact Information
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEQUANTARIUS J SPEED whose telephone number is (703)756-4779. The examiner can normally be reached M-F; 9AM-5PM ET.
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/DEQUANTARIUS JAVON SPEED/Junior Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
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