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 .
Status of the Claims
Claims 7, 8, and 13 are newly canceled. Claims 21-23 previously were canceled. Claims 1-5 and 20 remain withdrawn. Accordingly, claims 6, 9-12, and 14-19 as amended are under examination in the application.
Withdrawn Objections and Rejections
The objections to claims 6 and 16 are withdrawn in view of Applicant’s amendments to the claims.
All rejections of claims 7, 8, and 13 are withdrawn in view of Applicant’s cancelation of these claims.
All rejections under 35 U.S.C. 112(b) except for the rejection of claim 12 are withdrawn since these issues have been addressed by the claim amendments. The rejection of claim 12 under 35 U.S.C. 112(b) is maintained for the reasons of record.
The rejection of claims 6, 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by or, in the alternative, under 35 U.S.C. 103 as obvious over WO2021/007282A1 (Klessig et al.; “Klessig”) is withdrawn since Applicant has incorporated subject matter from a claim not included in this rejection into claim 6 as amended. Applicant’s argument to this effect is persuasive. New grounds of rejection necessitated by amendment are presented below.
Accordingly, subsequent rejections of claims 8 and 19 further in view of Kaplan and Kim, respectively, are withdrawn in view of the aforementioned withdrawal of rejections of a base claim. The relevance of the previously cited references is maintained as applied below.
Response to Arguments and Declaration
Applicant’s arguments filed 4/24/2026 (hereafter, “Remarks”) have been fully considered and are addressed as follows. The Declaration of Dr. Fatma Kaplan filed under 37 C.F.R. 1.132 has been considered and is addressed here also; the Declaration establishes Dr. Fatma Kaplan as a skilled artisan or at least one of ordinary skill in the art.
Regarding the rejections under 35 U.S.C. 102/103 as being anticipated by, or, in the alternative, obvious over Klessig, Applicant’s citations of case law on page 2 of Remarks are noted.
Applicant argues that Klessig is directed to ascaroside 10 and 18’s effect on plant growth control rather than abiotic stress; Applicant suggests that the Examiner has “picked” from Klessig’s teaching and that Klessig actually does not pertain to ascarosides’ property to resist abiotic stress but rather pertains to a general state of industry. Applicant concludes that there is no expectation of success or data associated with abiotic stress based on Klessig to arrive at the claimed invention.
Applicant states that Klessig teaches a laundry list of ascarosides and asserts that ascarosides have an unknown property not necessarily flowing from their structure all the time.
Applicant cites Dr. Fatma Kaplan’s declaration and takes the position that ascarosides preventing root damage from cold stress is not always present at certain concentrations and concludes that “the property of resistance to abiotic does not always present and does not “necessarily flow” as the Office suggested”; Applicant concludes that Klessig therefore does not teach the claimed invention. In reply, this argument has been considered but is not commensurate in scope with the claimed subject matter and therefore is not persuasive.
As to the declaration itself, the Declarant argues that although Klessig teaches certain chemicals, Klessig does not teach the combination or the property which is resistance to abiotic stress (point no. 13) and that the claimed property is not inherent and does not always exist (point no. 14) as evidenced by data summarized in point no 15 and point no. 16 of the declaration. In reply, this argument is not persuasive in view of the claim scope which it not limited to formulation amounts for instance, among other features to which the data summarized is limited.
Regarding rejections under 35 U.S.C. 103, Applicant argues that the Office has not provided proper analysis supporting rationale why one would have combined the applied art and arrived at the claimed invention. In reply, Applicant’s argument has been considered but is not persuasive in view of the rationale articulated in the record. Specifically, it is maintained that combining prior art elements according to known methods to yield predictable results and a simple substitution of one known element for another to obtain predictable results are exemplary rationales for establishing a prima facie case of obviousness. As detailed in the record, it is the examiner’s position that it would have been obvious to substitute the claimed ascarocides in combination for a single ascaroside exemplified in the prior art of record where the secondary reference teaches the two particularly claimed and combined ascarosides.
Further regarding the rejection of claim 19, Applicant argues that Kaplan does not cure Klessig’s alleged deficiency and asserts that there is no motivation to combine Klessig and Kaplan since Kaplan, as applicant characterizes, is directed to insect control rather than resistance to abiotic stress. Applicant asserts that one would not have expected success and argues that “the property of abiotic stress is unknown” and argues that the Office’s reasoning is conclusory. In reply, Applicant’s argument has been considered but is not persuasive because prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the art.
Maintained Rejections
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 12 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 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? Appropriate clarification is required.
New Grounds of Rejection Necessitated by Amendment of 4/24/2026
Claim Rejections - 35 USC § 103
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.
Claims 6, 9-12, and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over WO2021/007282A1 (Klessig et al.; “Klessig”) in view of US 2018/0343873A1 (“Kaplan”).
The elected claims are drawn to a method comprising applying a nematode pheromone including one or more ascarosides 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 ascr#9 and ascr#11.
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) and further generally includes ascarosides such as ascr#9 (see page 2, line 13).
The teachings of Klessig have been delineated above. Klessig does not specify a combination of ascarosides compounds as in claim 1.
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 that 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, by substituting the combination for single ascaroside or side-chain shortened analog or metabolite of the ascaroside as taught by Klessig (page 2, lines 11-14) 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]).
Regarding claims 9-12 and 14-17, these claims recite functional effects of performing the steps using the particular ascaroside formulation addressed above in regard to claim 6 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 claimed 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 19 is rejected under 35 U.S.C. 103 as being unpatentable over WO2021/007282A1 (Klessig et al.; “Klessig”) in view of US 2018/0343873A1 (“Kaplan”) as applied to claims 6, 9-12, and 14-18 above, and further in view of KR101446208 B1 (“Kim”).
The teachings of Klessig and Kaplan have been delineated above. Neither teaches 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, Kaplan, and Kim are all 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.
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 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..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached at 5712720616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AUDREA B CONIGLIO/ Primary Examiner, Art Unit 1617
Prosecution Insights