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 .
Response to Amendment
Applicant amendments to the claim and Specification have overcome the objections to the Specification and claims stated in the last Office action mailed on 4/22/26. Further, the amendment of claims 1 and 18 (deletion of term “effective”) overcomes the 35 U.S.C. 112(b) stated in the last Office action. Lastly, in regards to the rejection of claims 8, 18, and 21 under 35 U.S.C. 112(b) over the term “quality”, Applicant referred to [031] of the instant Specification, where the term “quality” is defined as any feature of the fruit that is desirable by the consumer including, but not limited to, texture, color, firmness, juiciness, aroma, and flavor. “Fruit quality” may also refer to scores on the hedonic scale, which are scores given by consumer taste panel assessments. As such the rejection of claims 8, 18, and 21 under 35 U.S.C. 112(b) is withdrawn.
Claim Status
Claims 1 and 18 have been amended to delete “an effective amount” and to recite “applying a mixture of (S)-abscisic acid (S-ABA) and a jasmonate to the stone fruit, wherein nicotinamide is not applied and wherein the mixture is applied at a concentration ratio from about 10:1 to about 1:10 S-ABA to the jasmonate.” Claim 8 was amended to add “the stone fruit”, and claims 9-10 are newly canceled with their limitations and features being incorporated into claims 1 and 18.
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 11 is 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 11 is rejected because it depends from canceled claim 10. The claim is indefinite because it is unclear if the claim is intended to be dependent from independent claim 1 or any other claim such as claim 8. For compact prosecution the claim will be examined as being dependent from claim 1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-8, 11-13, 15-16, 18-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tang et al. [Abscisic acid alleviates chilling injury in cold-stored peach fruit by regulating ethylene and hydrogen peroxide metabolism, 2022], hereinafter Tang, in view of Meng et al. [Changes in physiology and quality of peach fruits treated by methyl jasmonate under low temperature stress, 2009], hereinafter Meng, and Killilea et al. [US20230112633A1], hereinafter Killilea, evidenced by Sharma et al. [US 20220240512 A1], hereinafter Sharma, PubChem [Abscisic Acid, 2004], PubChem [Methyl jasmonate, 2004], PubChem [Nicotinamide, 2004], and Fan et al. [WO 03090534 A1], hereinafter Fan.
Regarding claims 1 and 11, Tang teaches a method of improving post-harvest cold stress (chilling injury) tolerance in a stone fruit [Tang, Introduction, p.2, right column, par.2], (peach fruit, which is considered a stone fruit, see Sharma [0032]) comprising applying (S)-abscisic acid (S-ABA) to the stone fruit [Tang, Materials and Methods, p.2, right column, par.3], (abscisic acid (ABA), also known as S-abscisic acid and S-ABA, see PubChem, Abscisic Acid, p.9, Synonyms), and wherein nicotinamide is not applied.
Tang does not teaches applying a mixture comprising a jasmonate to the stone fruit.
Meng teaches a method of improving post-harvest cold stress in a stone fruit (peach fruit) [Meng, Title, p.1029, left column, Materials and Methods], comprising applying jasmonate (methyl jasmonate (MeJA)) to the stone fruit [Meng, Title, Abstract, p.1029, left column, Materials and Methods], and wherein nicotinamide is not applied.
Regarding combining both abscisic acid and a jasmonate:
Killilea teaches a method of improving post-harvest [Killilea, 0003-0004] stress tolerance (equivalent to “to prolong the shelf-life or duration of freshness or usability of perishables, and particularly edible foods such as fresh fruits and vegetables” [Killilea, 0006]) in a stone fruit (i.e., peaches [Killilea, 0066]) comprising applying a liquid composition [Killilea, 0016-0017, 0021, 0024], the compositions being composition mixtures of abscisic acid [Killilea, 0379, p.71, K23, line 6] and jasmonates [Killilea, 0182], wherein nicotinamide (also known as niacinamide, see PubChem, Nicotinamide, p.1, Synonyms) is not applied or may exclude the application of nicotinamide since it is part of a list of optional compounds in the composition [Killilea, 0158; 0277, p.41, element 186, line 14].
Moreover, regarding combination of abscisic acid and jasmonates, MPEP 2144.06, I. states:
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare an abscisic acid and jasmonate composition, wherein nicotinamide is not applied as already taught by Tang and Meng, wherein the method comprise applying a mixture of abscisic acid and jasmonate composition mixture as taught by Killilea, by including a jasmonate as taught by Meng, into the method of improving post-harvest cold stress using abscisic acid of Tang, because all are directed to methods of improving post-harvest cold stress, and/or methods to prolong the shelf-life or duration of freshness or usability of perishables, and particularly edible foods such as fresh fruits and vegetables including stone fruit (peach fruit). Further, it would have been obvious to one of ordinary skill in the art because Tang already recognize that stone fruit (peach fruit) treated with a jasmonate (jasmonic acid) can reduce chilling injuries (reduce cold stress) in post-harvest peaches [Tang, p.2, left column, par.1], and further it would have been obvious to one of ordinary skill in the art because Meng teaches that stone fruits treated with jasmonate decreased the chilling injury (CI index) symptom and was beneficial for maintaining quality owing to reducing chilling injury of peach fruits under low temperature stress [Meng, Abstract]. Lastly it would have also been obvious to one of ordinary skill in the art to combine abscisic acid and jasmonate as taught by Killilea, because Killilea teaches that the coating compositions of the invention is suitable for prolonging the shelf-life or duration of freshness or usability of perishables, and particularly edible foods such as fresh fruits [Killilea, 0006].
Modified Tang teaches the method of claim 1 discussed above. Tang further teaches applying a concentration of S-ABA of 100 µmol/L (0.1 mmol/L) to the stone fruit [Tang, Materials and Methods, p.2, right column, par.3], and Meng further teaches applying a concentration of 0.1 mmol/L (100 µmol/L) of a jasmonate (methyl jasmonate (MeJA)) to the stone fruit [Meng, Title, Abstract, p.1029, left column, Materials and Methods].
While modified Tang in view of Meng do not explicitly teach the mixture is applied at a concentration ratio from about 10:1 to about 1:10 and from about 3:1 to about 1:3 S-ABA to the jasmonate required by claims 1 and 11 respectively, one of ordinary skill in the art would recognize that a concentration of 0.1 mmol/L of S-ABA applied to the stone fruit as taught by Tang, and a concentration of 0.1 mmol/L of a jasmonate (methyl jasmonate (MeJA)) applied to the stone fruit as taught by Meng, would have a concentration ratio of from about 1:1 of S-ABA to the jasmonate, which is a concentration ratio within (exact midpoint between 10:1 to about 1:10 and from about 3:1 to about 1:3) from about 10:1 to about 1:10 S-ABA to the jasmonate.
Furthermore, Fan disclose that composition mixtures of abscisic acid and jasmonates are suitable for treating cold resistance (cold stress tolerance) in plant materials [Fan, Abstract] such as stone fruits including but not limited to peach, apricot, plum, and cherry [Fan, 0018], (which are all known as stone fruits, see Sharma [0032]) by applying the abscisic acid and jasmonate composition mixture by suitable methods (i.e., spraying, wetting, etc.) selected according to the intended purpose [Fan, 0020], wherein separate S-ABA and jasmonate components can be mixed at the required mixing ratio before use [Fan, 0082], to prepare suspensions comprising components A) S-ABA and C) jasmonate of any desired concentration [Fan, 0064, 0081].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a concentration ratio from about 1:1 (which is a ratio within the claimed ratio of about 10:1 to about 1:10 and from about 3:1 to about 1:3 S-ABA to the jasmonate required by claims 1 and 11 respectively) as taught by Tang in view of Meng because both used the same concentration of 0.1 mmol/L for S-ABA and the jasmonate which would equate to equal parts of both compounds when mixed. Further, it would have been obvious to one of ordinary skill in the art to use any desired concentration ratio because Fan disclose that the separate S-ABA and jasmonate components can be mixed at the required mixing ratio before use [Fan, 0082], to prepare suspensions comprising components A) S-ABA and C) jasmonate of any desired concentration [Fan, 0064, 0081]. Moreover, as discussed above, the combination of references teach the ratio of 1:1 S-ABA to the jasmonate which is a ratio that also falls within the claimed ratio of claim 11 of from about 3:1 to about 1:3 S-ABA to the jasmonate.
Regarding claims 2-3, modified Tang teaches the method of claim 1 discussed above. Meng further teaches wherein the jasmonate is methyl jasmonate [Meng, Title, Abstract, p.1029, left column, Materials and Methods].
Regarding claims 4-5, modified Tang teaches the method of claim 1 discussed above. Tang further teaches wherein application occurs after harvest (picked up from an orchard) on the same day [Tang, Materials and Methods, p.2, right column, par.3], which falls within the claimed application time range of from about 4 weeks prior to harvest to about 2 weeks after harvest.
Regarding claims 6-7, modified Tang teaches the method of claim 1 discussed above. Tang further teaches wherein the stone fruit is subjected to chilling temperatures following application, wherein the chilling temperatures are from about 0.5 to about 15 degrees Celsius (4°C) [Tang, Materials and Methods, p.2, right column, par.3].
Regarding claim 8, modified Tang teaches the method of claim 6 discussed above. Tang further teaches wherein the quality of the stone fruit that was treated with S-ABA is improved compared to stone fruit that did not receive an application of the mixture of S-ABA prior to being subjected to chilling temperatures (S-ABA treated peach showed nearly no internal browning (IB) and reduced chilling injury index/symptom during cold storage) [Tang, Results, p.4, left column, par.1, Fig.1].
Tang does not teach wherein the quality of the stone fruit that was treated with the jasmonate is improved compared to stone fruit that did not receive an application of the mixture of the jasmonate prior to being subjected to chilling temperatures.
Meng teaches wherein the quality of the stone fruit that was treated with the jasmonate is improved compared to stone fruit that did not receive an application of the mixture of the jasmonate prior to being subjected to chilling temperatures (flesh browning as only a chilling injury/index (CI) symptom was observed in peaches after storage at 5°C, but jasmonate (methyl jasmonate (MeJA) treatment of the stone fruit can effectively alleviate chilling injury) [Meng, Discussion, p.1033, par.1, Fig.1A].
Regarding combining both abscisic acid and a jasmonate for the same purpose (improving post-harvest cold stress): see Killilea reference discussed in claim 1 above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a jasmonate as taught by Meng, into the method of Tang, because Tang already recognize that stone fruit (peach fruit) treated with a jasmonate (jasmonic acid) can reduce chilling injuries (reduce cold stress) in post-harvest peaches, which is also taught by Killilea [Killilea, 0003-0004, 0006, 0066, 0016-0017, 0021, 0024, 0379, p.71, K23, line 6, 0182], and further because Meng teaches that stone fruits treated with jasmonate decreased the chilling injury (CI index) symptom and was beneficial for maintaining quality owing to reducing chilling injury of peach fruits under low temperature stress [Meng, Abstract, Discussion, p.1033, par.1, Fig.1A].
Regarding claims 12-13, modified Tang teaches the method of claim 1 discussed above. Tang further teaches wherein the S-ABA is applied at a rate of 100 µmol/L (0.1 mmol/L), and the molecular weight of S-ABA is 264.32 g/mol [PubChem, Abscisic Acid, p.1];
ppm= mmol/L x molecular weight (g/mol);
ppm= 0.1 mmol/L x 264.32 g/mol;
ppm= 26, which is a ppm concentration that falls within the claimed rate of from about 1 to about 5,000 parts per million of S-ABA required by claim 12, and from about 10 to about 1,000 parts per million of S-ABA required by claim 13.
Regarding claims 15-16, modified Tang teaches the method of claim 1 discussed above. However, Tang is silent regarding the jasmonate being applied at a rate of from about 1 to about 5,000 parts per million, and from about 10 to about 1,000 parts per million.
Meng teaches wherein the jasmonate is applied at a rate of 0.1 mmol/L, and the molecular weight of the jasmonate used by Meng (methyl jasmonate (MeJA)) is 224.30 g/mol [PubChem, methyl jasmonate, p.1];
ppm= mmol/L x molecular weight (g/mol);
ppm= 0.1 mmol/L x 224.30 g/mol;
ppm= 22, which is a ppm concentration that falls within the claimed rate of from about 1 to about 5,000 parts per million, and from about 10 to about 1,000 parts per million of the jasmonate.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a jasmonate applied at a rate of 22 ppm as taught by Meng, into the method of Tang, because both are directed to methods of improving post-harvest cold stress in a stone fruit (peach fruit), also because Tang already recognize that stone fruit (peach fruit) treated with a jasmonate (jasmonic acid) can reduce chilling injuries (reduce cold stress) in post-harvest peaches [Tang, p.2, left column, par.1], and further because Meng teaches that stone fruits treated with jasmonate decreased the chilling injury (CI index) symptom and was beneficial for maintaining quality owing to reducing chilling injury of peach fruits under low temperature stress [Meng, Abstract].
Regarding claim 18, see claims 1 and 8 rejections above where modified Tang in view of Meng and Killilea teaches a method of improving fruit quality in stone fruit subjected to post-harvest chilling temperatures comprising applying a mixture of (S)-abscisic acid (S-ABA) and a jasmonate to the stone fruit, wherein nicotinamide is not applied, and wherein a concentration of 0.1 mmol/L of S-ABA is applied to the stone fruit as taught by Tang, and a concentration of 0.1 mmol/L of a jasmonate (methyl jasmonate (MeJA)) is applied to the stone fruit as taught by Meng, which would have a concentration ratio of from about 1:1 of S-ABA to the jasmonate, which is a concentration ratio within (exact midpoint between 10:1 to about 1:10) from about 10:1 to about 1:10 S-ABA to the jasmonate.
Regarding claim 19, see claim 6 rejection above where modified Tang teaches wherein application occurs prior to the stone fruit being subjected to chilling temperatures.
Regarding claim 20, see claim 7 rejection above where modified Tang teaches wherein chilling temperatures are from about 0.5 to about 15 degrees Celsius (4°C).
Regarding claim 21, see claim 8 rejection above where modified Tang teaches wherein fruit quality is improved compared to stone fruit not receiving an application of the mixture of S-ABA and the jasmonate.
Claim(s) 14, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tang [Abscisic acid alleviates chilling injury in cold-stored peach fruit by regulating ethylene and hydrogen peroxide metabolism, 2022], in view of Meng [Changes in physiology and quality of peach fruits treated by methyl jasmonate under low temperature stress, 2009], and Killilea [US20230112633A1], evidenced by Sharma [US 20220240512 A1], PubChem [Abscisic Acid, 2004], PubChem [Methyl jasmonate, 2004], PubChem [Nicotinamide, 2004] and Fan et al. [WO 03090534 A1], hereinafter Fan, as applied to claim 1 above, and further in view of Fan [WO 03090534 A1].
Regarding claims 14, and 17, modified Tang teaches the method of claim 1 discussed above but it is silent regarding the S-ABA being applied at a rate of from about 50 to about 1,000 parts per million, and the jasmonate being applied at a rate of from about 50 to about 1,000 parts per million.
Fan teaches the composition mixtures of abscisic acid and jasmonates discussed above and further teaches that S-ABA may be applied at a concentration rate of from about 0.5 to about 500 parts per million, and the jasmonate may be applied at a concentration rate of from about 0.5 to about 500 parts per million [Fan, 0016].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply S-ABA and the jasmonate at a concentration of from about 0.5 to about 500 parts per million as taught by Fan, into the method of modified Tang, because Fan teaches that dosage concentration can vary over a wide range and depends on factors such as the type of application (foliar spray, application, root irrigation, seed dressing, injection, etc.), the type of cultivated plant, the growing period of the plant, climatic conditions and other factors [Fan, 0019].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8, 12-21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The rejection has been amended in view of Applicant amendments to claim 1. The new rejection of claim 1 as stated above is now over Tang in view of Meng and Killilea, evidenced by Sharma, PubChem [Abscisic Acid, 2004], PubChem [Methyl jasmonate, 2004], PubChem [Nicotinamide, 2004] since claim 1 now requires the exclusion of Nicotinamide in the S-ABA and the jasmonate mixture composition.
In page 6 of Applicant Remarks, Applicant urges that evidence of unexpected results is shown in Example 1, [038-043], Table 1, p.8-10, and Example 2, [044-047], Tables 2-3, p.10-12 of the instant Specification. However, the Examiner notes that while there is data (see Table 1, p.10 of Specification) showing S-ABA to the jasmonate mixture in ratios of 10:1 (3.3 to 0.33 S-ABA to the jasmonate) to 1:10 (0.33 to 3.3 S-ABA to the jasmonate), as well as data showing S-ABA to the jasmonate mixture at a ratio of 1:1 (0.33 to 0.33 and 3.3 to 3.3 S-ABA to the jasmonate), there are no other data points outside of the claimed range to show criticality of the claimed ratio range of 10:1 to 1:10. Lastly, Tables 2-3 only shows data for S-ABA to the jasmonate mixture in ratios of 1:1. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d) II.
Conclusion
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 LUIS EUGENIO DIOU BERDECIA whose telephone number is (571)270-0963. The examiner can normally be reached Monday-Friday 7:30-4:30.
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/LUIS EUGENIO DIOU BERDECIA/Examiner, Art Unit 1792
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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