DATAILED 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 .
Status of Claims
Claims 1-15 are cancelled by the applicant. Claims 16-28 are new, pending, and under examination.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. KR-10-2022-0017109, filed on February 9, 2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/05/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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.
Claim(s) 16, 17, 22, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GB955685A (1964).
GB ‘685 teaches compositions with methionine and glutamic acid used on potatoes and hybrid field corn (Page 6, example III, example IV, example VI). Corn is scientifically a fruit as it bears seeds. GB ‘685 teaches a method of increasing the yield of emergent crops by applying the composition (claim 16 of GB ‘685). Column 1 of page 11 provides growth characteristics to corn including reducing the amount of smut, thicker ears, tops of the ripe kernels are usually rougher and wider kernels. Thus, as a composition with such amino acids methionine and glutamic acid is applied to corn (a scientific fruit) for beneficial characteristics including those related to ripe kernels. It is both used to cultivate plants and to lead to increase ripeness of a fruit (corn) through better growth characteristics.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 non- obviousness.
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.
Claims 16-18, 20, 22-24, 26, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Sawant et al. (US20210188726A1).
Sawant et al. describes an invention relating to a novel agricultural composition for soil application, which comprises elemental sulfur and at least one amino acid, and can also include micronutrients and plant growth promoters, formulated as water-dispersible granules or a liquid suspension (abstract). Sawant et al. teaches that this composition can be used to enhance both the growth and development of crops (page 1, column 2, paragraph 8), which relates to the cultivation of plants and improvement of its physiological development, and would thus have reasonably been expected to inherently promote fruit maturation and ripening in fruit-bearing plants. Sawant et al. specifically teaches that this composition can enhance crop characteristics––including early grain maturity, nutritional value of fruits and vegetables, protein content, and produce quality––all of which are physiological attributes closely associated with fruit maturation and ripening (page 16, column 2, paragraph 136-137). Sawant et al. also teaches that this composition can enhance cultivation characteristics including increases in crop yield, grain or fruit yield, tiller productivity, and early grain maturity (page 16, column 2, paragraph 136). Sawant et al. specifically teaches that amino acids are key components to improving the production and quality of crops (page 1, column 2, paragraph 5). Sawant et al. teaches that the composition can include one or more of the following amino acids: methionine, arginine, threonine, glutamic acid, histidine, and lysine, and salts or derivatives thereof (page 4, column 1, paragraph 37-38; page 25, column 1, claims 25 and 29). Sawant et al. teaches that this composition can be in both liquid and granular (or dry) forms, with the amino acids and their mixtures comprising the compositions at concentrations ranging from 0.1% to 70% w/w (page 2, column 2, paragraph 17-18).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed inventions, to modify the agricultural compositions and methods taught by Sawant et al. and arrive at the claimed methods for promoting fruit ripening and cultivation. Sawant discloses agricultural compositions comprising elemental sulfur and one or more amino acids including all of those claimed in this application, and teaches that such compositions enhance plant cultivation by improving growth, physiological development, yield, and early maturity of crops. Sawant further teaches that the disclosed compositions improve product quality, protein content, maturation, and nutritional value of fruits, which are physiological attributes associated with fruit maturation. Fruit maturation inherently includes the ripening stage in fruit-bearing plants. Sawant additionally demonstrates the application of the disclosed composition to fruit crops, such as tomatoes, and teaches amino acid concentrations overlapping the claimed range. Accordingly, a person of ordinary skill in the art would have had reasonable expectation that administering the compositions taught by Sawant to plants would promote cultivation and maturity, and would thus inherently result in enhanced ripening of fruit-bearing plants, which renders the claimed methods an obvious variation of the teachings of Sawant et al.
Claims 19 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Sawant et al. (US20210188726A1) in view of Son et al. (KR20180103217A).
Sawant et al. teaches all of the limitations previously listed, including a fruit ripening and cultivating composition composed of the following amino acids: methionine, arginine, threonine, glutamic acid, histidine, and lysine, and salts or derivatives thereof, with the total amino acid composition ranging from 1% to 70% w/w.
However, Sawant et al. fails to teach the composition containing one of the three following groups of amino acid combinations, all based on 1 part by weight of methionine: Group A includes arginine, glutamic acid, and histidine, each ranging from 1 to 5 parts by weight. Group B includes arginine, threonine, histidine, and lysine, each from 1 to 5 parts by weight. Group C includes threonine, glutamic acid, and lysine, each also from 1 to 5 parts by weight.
Son et al. describes a fertilizer composition containing L-methionine combined with other specific L-amino acids and/or nucleic acid (abstract). Son et al. teaches that this composition improves crop outcomes such as yield and growth (page 5, column 2). Son et al. teaches that the L-methionine may be used in an amount of 1 to 17 parts by weight, the L-lysine may be used in an amount of 8 to 22 parts by weight, the L-threonine may be used in an amount of 2 to 8 parts by weight based on 100 parts by weight of the fertilizer composition, 1 to 10 parts by weight of the L-arginine, and 7 to 20 parts by weight of the L-glutamic acid (page 8, column 2)––these weight ratios for each component significantly overlap with those claimed.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed inventions, to modify the agricultural compositions taught by Sawant et al. by incorporating the methionine-based amino acid combinations and weight ratios disclosed by Son et al., because both references are directed to improving crop growth, and thus, downstream maturation using amino acid-based formulations. Son Expressly teaches that L-methionine with specific amino acids (lysine, threonine, arginine, and glutamic acid) at weight ratios overlapping with those claimed enhances crop growth and yield, and a person of ordinary skill in the art would have been motivated to apply these teachings to compositions of Sawant to optimize its plant physiological performance. Further, a person of ordinary skill in the art would have had a reasonable expectation of success in doing so, as both references demonstrate that amino acid-based compositions advance plant growth and development, which predictably promotes downstream fruit maturation and ripening on fruit-bearing plants. Accordingly, the claimed compositions and methods represent an obvious variation of the combined teaching of Sawant and Son.
Claims 21 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Sawant et al. (US20210188726A1) in view of Yamashita (US6309440B1).
Sawant et al. teaches all of the limitations previously listed, including a fruit ripening and cultivating composition composed of the following amino acids: methionine, arginine, threonine, glutamic acid, histidine, and lysine, and salts or derivatives thereof, with the total amino acid composition ranging from 1% to 70% w/w.
However, Sawant et al. fails to teach the method of promoting the ripening and cultivation of plants, wherein the method is applied to any plant selected from the group consisting of genus Coffea, genus Solanum, genus Capsicum, genus Malus.
Yamashita discloses a comprehensive method and a nutrient-rich composition containing sugars, macro- and micronutrients, vitamins, and enhancement components, designed to be applied in various ways (e.g., foliar spray, soil amendment, seed coating) at specific intervals to stimulate plant growth, optimize solar energy utilization, and increase overall crop production (abstract). Yamashita teaches that this composition treats plants that contain fruits (column 1, lines 12-14). Yamashita teaches that macronutrients are essential to plant nutrition, growth, and fruit maturation (column 10, lines 40-42). Yamashita teaches that amino acids can be used as macronutrients in this composition (column 6, line 60). Yamashita teaches that this composition can be used on Coffea arabica (column 43, lines 55-60), Solanum melongena (column 43, lines 11-15), Capsicum spp. (column 43, lines 10-15), and Malus spp. (column 43, lines 20-25).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed inventions, to apply the agricultural compositions and methods taught by Sawant et al. to plants of the Genus Coffea, Solanum, Capsicum, and Malus as recited in the claims. This is because Yamashita expressly teaches treatment of these fruit-bearing plant genera using nutrient-based agricultural compositions to improve plant growth, nutrition, and fruit development. A person of ordinary skill in the art would have thus been motivated to apply the compositions of Sawant to these known fruit crops in order to achieve the same physiological benefits described by Sawant including enhanced growth, development, and maturation, and would therefore behave had a reasonable expectation of success in doing so, as Yamashita teaches that these plant genera are responsive to nutritional and amino acid-based treatments. Accordingly, applying the compositions and methods of Sawant to the plant genera taught by Yamashita represents a predictable use of established agricultural compositions on known fruit crops, rendering the claimed methods obvious.
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 16, 20, 22, 26 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over the following claims of U.S. Patent No. 18/690,259 (referred to as co-pending ‘259): claims 20, 26, and 32 (for 16 and 22); claims 21, 24, 27, 30, 34, and 37 (for 20 and 26).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 20(b), 26(b), and 32(b) of co-pending ‘259 recites a method of preventing drought, promoting plant growth, and promoting plant cultivation, respectively––using combinations of amino acids that overlap with those of claim 16 and 22 of this application (including glutamic acid, histidine, and arginine). The recited methods of use for co-pending ‘259 all promote ripening and cultivation as claimed in this application (i.e., preventing a drought and promoting plant growth promotes the downstream ripening and cultivation of fruits). Additionally, dependent claims 25, 31, and 37 of co-pending ‘259 recites fruit-bearing genera, such as Phaseolus (e.g., beans), Glycine (e.g., soybean), and Lens (e.g., Lentils), which show that such claimed methods can be applied to fruits. Claims 21, 24, 27, 30, 34, and 37 of co-pending ‘259 recite concentrations of amino acids within its composition ranging from 0.1% to 10%, and 10% to 50% w/w, respectively––these overlap with the amino acid concentration of claim 20 and 26 of this application, which is 10% to 50% w/w.
It would have been obvious to a person of ordinary skill in the art to use the disclosed amino acid composition of co-pending ‘259 to promote fruit ripening or cultivation as recited in claims 16 to 22 of this application, because fruit ripening is a natural stage of plant growth and cultivation, while drought prevention also promotes it, and co-pending ‘259 teaches administering amino acid combinations to enhance such processes. It further would have been obvious to employ amino acid concentrations of 10% to 50% w/w as recited in claims 20 and 26, since co-pending ‘259 expressly teaches overlapping concentration ranges, and a selection of a known workable range from a disclosed broader or overlapping range constitutes an obvious design choice. The claimed methods differ from the teachings of co-pending ’59 only due to the slight variation of intended use (i.e., promoting fruit ripening) and the additional amino acids that may be used in the composition––which does not impart patentable distinction––as the underlying method of use are similar and the composition parameters overlap.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 16, 21, 22, and 27 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over the following claims of U.S. Patent No. 18/294,847 (referred to as co-pending ‘847): Claims 22, 23, 29,30, 35, 36 (for 16 and 22); claims 28 and 33 (for claims 21 and 27).
Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending ‘847 recites a method of reducing phytotoxicity by a pesticide (claims 22 and 23), cultivating a plant (claims 29 and 30), and a pesticide composition (claims 35 and 36) ––using combinations of amino acids that overlap with those of claims 16 and 22 of this application (including histidine and glutamic acid). The recited methods of use for co-pending ‘847 all promote ripening and cultivation as claimed in this application (i.e., reducing phytotoxicity and applying pesticides promotes the downstream ripening and cultivation of fruits), and the composition of claim 35 and 36 inherently perform the same function of claims 16 and 22 of this application, as their amino acids overlap. Claims 28 and 33 of co-pending ‘847 teach the administration of the amino acid composition to plant genera that are the same as those listed in claim 21 and 27 (including Solanum and Coffea).
A person of ordinary skill in the art at the time of the claimed inventions, in view of the ‘847 application, would have been motivated to employ the disclosed amino acid compositions in plant cultivation methods as claimed, because the ‘847 application teaches that such amino acid compositions reduce phytotoxic stress associated with pesticide application and are specifically formulated for use in agricultural treatment of plants. It would have thus been reasonably expected that reducing plant stress during such treatment would facilitate improved cultivation performance and downstream plant development, including fruit ripening, which would be predicted outcomes of improved plant health under standard agricultural practices. The amino acid compositions, plant genera, and agricultural uses recited in the instant claims overlap with those taught in the ‘847 application, and the composition claims of ‘847 application are directed to the same agricultural use and do not possess an independent patentable utility distinct from cultivation and ripening methods recited in the instant claims. Accordingly, the claimed methods and compositions claims of the ‘847 application represents obvious variants that lack patentable distinction, with a reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 16 and 22 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over the following claims of U.S. Patent No. 18/723,254 (referred to as co-pending ‘254): claim 24 and 35 (for 16 and 22).
Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending ‘254 recites a method of enhancing plant disease resistance (in claims 24 and 35) using combinations of amino acids that overlap with those of claims 16 and 22 of this application (including histidine and glutamic acid). The recited method of use for co-pending ‘254 promote ripening and cultivation as claimed in this application (i.e., enhancing plant disease resistance promotes the downstream ripening and cultivation of fruits). Claim 27 of co-pending ‘254 also teaches the administration of the amino acid composition to fruits, which shows that this method can specifically be applied to fruits as per the claims of this application.
A person of ordinary skill in the art at the time of the claimed inventions, in view of co-pending ‘254, would have been motivated to employ the disclosed amino acid combinations in plant cultivation methods as claimed, because this ‘254 application teaches that such amino acid compositions enhance plant health by improving disease resistance during agricultural treatment. It would have been reasonably expected that improving plant health through the application of overlapping amino acid compositions would overlap in scope with cultivation methods directed to plant growth and downstream fruit development, including maturation and ripening, as predictable outcomes of standard agricultural practice. The amino acid compositions recited in the instant claims and those taught in ‘254 overlap in identity and use, and their application to fruits and cultivated plants therefore represents a routine and predictable variation that does not confer patentable distinction. Furthermore, the composition of ‘254 is specifically directed to the same agricultural treatment purpose and does not possess an independent patentable utility that is distinct from the cultivation methods recited in the claims of this application. Accordingly, the claimed methods would have been obvious to a person of ordinary skill in the art and constitute obvious variants that lack patentable distinction over the claims of ‘254.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusions
No claim is found allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARYA AHMADI BAZARGANI whose telephone number is (571)272-0211. The examiner can normally be reached Monday - Friday 9:00AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached at (571) 272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Arya A. Bazargani, Ph.D.
Patent Examiner
Art Unit 1613
/MARK V STEVENS/Primary Examiner, Art Unit 1613
Prosecution Insights