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 .
Receipt and consideration of Applicant’s amended claim set and Applicant’s arguments/remarks submitted on January 2, 2026, and Request for Continued Examination submitted February 6, 2026, are acknowledged.
All rejections/objections not explicitly maintained in the instant office action have been withdrawn per Applicant’s claim amendments and/or persuasive arguments. Applicant’s claim amendments have necessitated new grounds of rejections set forth below.
Claim Status
Claims 1-8 have been presented for examination on the merits.
Claim Objection(s) / Rejection(s) Withdrawn
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 04/29/2026) that are not repeated and/or maintained in the instant Office action are withdrawn.
New/ Maintained Claim Rejection(s)
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.
Claim 1 and 5 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.
For claims 1 and 5: step c state "contain at least 253 peptides as listed in the specification". As per MPEP 2173.05(s), “Where possible, claims are to be complete in themselves.” The Examiner suggests the following amendment in order to obviate this rejection: “…contain at least 253 peptides, wherein the 253 peptides comprise the amino acid sequences of SEQ ID Nos: 1-253.
For claim 3: Claims 1 and 5 step c state "the concentration is in the range of 2.0 X 10⁵ ~ 4.5 X 10⁵ ppm is unclear if the limitation is referring to the concentration of each
individual peptide or if the concentration is referring to the total concentration of the combination of all of the " at least 253” peptides.
Claims 2-4 and 6-8 are dependent on claims 1 and 5, and do not clarify the issues discussed above, and thus are also rejected.
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the following claims of the following Copending Applications in view of Wei et al. (US20160095314A1; Published April 07, 2016).
Claims
Copending Application No.
Crop/ plant
1-8
18/527,787
1-8
18/534,628
grape
1-8
18/537,395
cotton
1-12
18/389,780
grape
1-6
18/533,181
tea plant
9-16
18/536,211
wheat
1-5
18/403,246
cucumber
1-4
18/412,611
corn
1-3
18/418,259
corn
1-4
18/412,615
wheat
1-4
18/408,257
wheat
1-6
18/645,293
lettuce
1-3
18/642,007
corn
1-6
18/645,307
lettuce
1-7
18/643,756
corn
1-8
18/658,834
soybean
1-6
18/658,824
corn
1-4
18/671,837
wheat
1-10
18/748,493
corn
1-10
18/758,140
tea plant
1-4
18/902,317
farming plants
1-9
18/898,195
rice
1-4
18/409,792
cotton
1-8
18/428,193
tomato
1-5
18/531,687
coffee
1-9
18/639,751
soybean
1-4
18/642,445
asparagus
1-8
18/656,153
tomato
1-6
18/671,848
soybean
1-8
18/758,198
cotton
1-6
18/774,885
melon
1-6
18/668,598
cotton
Although the claims at issue are not identical, they are not patentably distinct from each other because all cited claim sets are drawn to the same method of treating a plant species (“crop/plant” column of above table) comprising preparing a KHP solution by mixing a keratin product (e.g., feathers) with overlapping water content and overlapping and/or similar amount of water in a sealed container, hydrolyzing said mixture in the sealed container under overlapping and/or similar temperature and pressure conditions, confirming the solution has the 253 peptides (SEQ ID Nos.: 1-253) with the same and/or overlapping molecular masses and concentration via mass spectrometer analysis, and applying said KHP solution, which has been diluted with water (in overlapping and/or similar ratio ranges) to the plant species via leaf spray or soil infusion at various times of plant development. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
The primary difference is that the copending applications recite different crop plant species (see species in “crop/plant” column of above table) that is treated by the same method steps with the same composition. The primary difference is that the copending applications recite different crop plant species (see species in “crop/plant” column of above table) that is treated by the same method steps with the same composition. Wei is relied upon for this disclosure. The teachings of Wei are set forth herein below.
Wei teaches that peptide compositions are known to treat plants or plant seeds for example, when it is known that harvested cuttings or fruit or vegetables are intended to be shipped great distances or stored for long periods of time post-harvest. Peptide compositions are known to modulate plant biochemical signaling, impart disease resistance to plants, enhance plant growth, impart tolerance to biotic and abiotic stresses, impart post-harvest disease resistance to fruit or vegetable, and enhance the longevity of fruit or vegetable ripeness (abstract; paragraph 0498, 0500). Among the plants suitable for treatment include, for example, asparagus, cabbage, grapes, coffee, corn, cotton, cucumber, lettuce, melon, rice, soybean, tea, tomato, watermelon, and wheat (paragraph 0501).
The teachings provide support in the prior art that a peptide composition can provide enhanced plant yield and other aforementioned benefits to a large variety of plants, including lettuce and the copending crop species. Therefore, it would have been prima facie obvious before the effective filing date of the instant invention to use the method of the copending claims and choose application to lettuce from the limited number of plants disclosed by Wei as a design choice, with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to do so as Wei discloses that peptide compositions are effective for enhancing plant yield and providing other benefits to a vast array of plants, including lettuce. By doing such, one of ordinary skill in the art would have chosen from a finite number of predictable solutions and would have used the identified lettuce as suitable to be used in the copending claimed method.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,527,269 B2 (‘269).
Although the claims at issue are not identical, they are not patentably distinct from each other because all cited claim sets are drawn to the same method of treating soybean plants ( ‘269) comprising preparing a KHP solution by mixing a keratin product (e.g., feathers) with overlapping water content and overlapping and/or similar amount of water in a sealed container, hydrolyzing said mixture in the sealed container under overlapping and/or similar temperature and pressure conditions, confirming the solution has the 253 peptides (SEQ ID Nos.: 1-253) with the same and/or overlapping molecular masses and concentration via mass spectrometer analysis, and applying said KHP solution, which has been diluted with water (in overlapping and/or similar ratio ranges) to the plant species via leaf spray or soil infusion at various times of plant development. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed July 16,2026 have been fully considered. The submission of a terminal disclaimer over copending applications 18/642,487, 18/639,950, 18/778,049, 18/827,519,18/409,790, and 18/645,354 has overcome previous double patenting rejection. However, there are new grounds of rejection under double patenting.
The 112 rejections are maintained for claims 1 and 5 because “Where possible, claims are to be complete in themselves.” Applicant did not amend claims so that they are incomplete as written as discussed above.
For claim 3, the 112 rejection is maintained because it is unclear if the limitation is referring to the concentration of each individual peptide or the concentration of the combination as discussed above.
Conclusion
Claims 1-8 are rejected. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASMINE A EVANS whose telephone number is (571)272-9796. The examiner can normally be reached Mon-Fri 8:00-5:00EST.
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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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/J.A.E./Examiner, Art Unit 1616
/ERIN E HIRT/Primary Examiner, Art Unit 1616
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