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 .
Election/Restrictions
Applicant’s election of Group II, claims 6-19, in the reply filed on 2/16/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-5 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected product and process of making, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/16/2026.
Accordingly, claims 6-19 are pending and under current examination.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/14/25 has been considered by the examiner.
Claim Objections
Claims 6 and 16 are objected to because of the following informalities: “wherein” as recited immediately following the chemical formula illustration of claim 6 is capitalized, and “Strigolactone” in claim 16 is capitalized, however it is not apparent why these words are capitalized. Appropriate correction is required.
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 11-13 and 19 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 11 and 13 include “at least about” language coupled to endpoints of numerical ranges, and claim 12 includes “between about” coupled to endpoints of numerical ranges such that the metes and bounds of the claimed ranges are unclear. What values are included and/or excluded by the claimed range? Claim 19 in line 2 on page 6 of the claim set recites “a demethylation”, however this part of speech does not appear to recite a common or chemical noun. Appropriate clarification is required.
Claim Rejections - 35 USC § 102/103
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 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.
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 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 nonobviousness.
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 6, 7, and 9-18 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO2021/007282A1 (Klessig et al.; “Klessig”).
The elected claims are drawn to a method comprising applying a nematode pheromone including one or more ascaroside to a plant, plant part, and/or seed, in an effective amount to have the claimed effects relative to a non-treated plant, plant part, or plant seed wherein the ascaroside is illustrated by the formula shown in claim 6.
Klessig teaches compositions and methods for enhancing plant growth by contacting the target plant and/or its environment with a chemical structure identical to a compound produced by a pathogen which is a nematode (page 2, lines 6-10) wherein the compound produced by a pathogen may comprise an ascaroside (e.g. ascr#18) and/or a side-chain shortened analog or metabolite of the ascaroside such as ascr#9 (page 2, lines 11-14). This method may be effective to result in increased rate of root growth among other effects (page 2, line 17)(limitations of claims 6, 7, 10) whereby pest resistance and drought stress management are benefits (page 1, lines 24-26)(limitation of claim 9). Klessig teaches treatment of a crop plant including rice (see page 5, lines 24 and 30 in particular)(limitation of claim 18).
Accordingly, Klessig teaches each and every limitation of claims 6, 7, 9, 10, and 18.
Regarding claims 11-17, these claims recite functional effects of performing the steps using the particular ascaroside formulation addressed above in regard to claims 6 and 7 for instance. It is the examiner’s position that Klessig teaches process steps included within the method of claim 6 for instance whereby performing Klessig’s process would have been inseparable from achieving the effects described in claims 11-17 such that Klessig teaches or at least renders obvious the claimed elements. The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995). “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). The court in Ex parte Levy referenced the decision of In re Oelrich and Divigard, 212 USPQ 323 (C.C.P.A. 1981), which stated that “If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.” Finally, Applicant is directed to re Best, 562 F.2d 1252, 1254–55 (CCPA 1977)(“where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.”). Also, it is the examiner’s position that Klessig teaches the process steps, considered a “structure” instantly claimed such that the additional claimed functions of performing those steps are inseparable; “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.” See MPEP 2112.01 or In re Best, 195 USPQ 430, 433 (CCPA 1997). Finally, "When the PTO shows a sound basis for believing the products of the applicant and the prior art ”re the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over WO2021/007282A1 (Klessig et al.; “Klessig”) as applied to claims 6, 7, and 9-18 above, and further in view of US 2018/0343873A1 (“Kaplan”).
The teachings of Klessig have been delineated above. Klessig does not specify a combination of ascaroside compounds as required by claim 8.
Kaplan cures this deficiency. Kaplan teaches a nematode dispersant composition and method for biocontrol upon application to a field for instance (see abstract, in particular). Kaplan details t hat ascaroside pheromones (ascr#9 and ascr #11) are structural analogs with activity when in combination (see [0015]).
Both Klessig and Kaplan pertain to ascaroside application to plants for nematode control. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to combine ascr#9 and ascr#11 as in Kaplan into a single application method of Klessig with a reasonable expectation of success. One would have been motivated to do so since Kaplan teaches these to be analogs desirably useful in combination for insect pest control methods (see [0015]-[0023], [0034]).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over WO2021/007282A1 (Klessig et al.; “Klessig”) as applied to claims 6, 7, and 9-18 above, and further in view of KR101446208 B1 (“Kim”).
The teachings of Klessig have been delineated above. Klessig does not teach a method further comprising one of the components recited in claim 19.
Kim cures this deficiency. Kim teaches insect prevention and treatment by application of mixtures to plants (see abstract, in particular) wherein environmentally friendly materials include nematodes, pheromones and products of Aspergillus and paraffin oil alike (see paragraph starting “Environmentally friendly materials…” of translation).
Klessig and Kim are both directed to pest control methods including treatment with pheromones. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to combine Aspergillus for its fermentation products in formulation with nematodes and/or pheromones for pest management as taught by Kim in the formulation of Klessig, with a reasonable expectation of success. One would have been motivated to do so for desirable pest management alongside environmental friendliness as taught by Kim.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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/AUDREA B CONIGLIO/Primary Examiner, Art Unit 1617