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 .
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.
Claim Rejections - 35 USC § 112, Second Paragraph
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 5-8 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.
Claim 5 recites the limitation “the plant" in line 2. There is insufficient antecedent basis for the limitation “the plant” in the claim because it is unclear if this term is referring to “the plant seedling” or “the mature plant” as introduced in claim 1.
Claim Rejections - 35 USC § 102
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.
Claims 1, 3-5, 7, and 9 are rejected under 35 U.S.C. 102 as being as being anticipated by Chen et al. (CN 112655709 A with a foreign translation provided by US 2024/0057598 A1).
Claims 1 and 9 are anticipated because Chen discloses the use of 2-amino-3-methylhexanoic acid as a plant immunity inducer (abstract). Chen discloses 2-amino-3-methylhexanoic acid is applied to both seedlings and mature plants to promote growth and increase the yield [0025]-[0031] [0003].
Claim 3 is anticipated because Chen discloses that 2-amino-3-methylhexanoic acid is exogenously sprayed on plant seedlings [0025]. The spray would come into contact with both the stems and leaves.
Claim 4 is anticipated because Chen discloses that 2-amino-3-methylhexanoic acid is applied to mature plants by a stem and leaf treatment [0028].
Claims 5 and 7 are anticipated because Chen discloses 2-amino-3-methylhexanoic acid is used on tomatoes [0025].
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.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being as being obvious over Chen et al. (CN 112655709 A with a foreign translation provided by US 2024/0057598 A1) in view of Verdoliva et al. (Scientia Horticulturae, 2021, 279:109896).
Claims 1, 3-5, 7, and 9 are anticipated by Chen as described above.
Regarding claim 2, Chen discloses that 2-amino-3-methylhexanoic acid is applied to plant seedlings and improves root length and growth of plants [0025]-[0031] [0081] [0003].
Chen does not disclose that the seedlings are treated by a hydroponic treatment.
Verdoliva teaches treating seedlings with a hydroponic treatment (pg. 2, right column, third paragraph) and that hydroponics is a beneficial method of growing plants because the harvested products contain fewer soil particles which leads to less soil-borne disease and fewer washing treatments with a consequent saving in water and energy. Furthermore, Verdoliva teaches that hydroponic systems can substantially reduce the pollution of water sources, while contributing to a reduction in water and fertilizer consumption. Verdoliva also teaches that hydroponic systems allow flexibility and intensification, providing high crop yield and high-quality products, even in areas with adverse growing conditions and that hydroponics is ideal for holistic control of crop development, quality and uniformity (pg. 1, right column – pg. 2, left column).
Since Chen generally teaches the growth of plant seedlings, it would have been prima facie obvious to one of ordinary skill in the art to treat the seedlings to a hydroponic treatment, within the teachings of Chen, because Verdoliva teaches treating seedlings with a hydroponic treatment. An ordinarily skilled artisan would be motivated to use a hydroponic treatment because Verdoliva teaches that hydroponics is beneficial because it leads to less soil-borne disease and fewer washing treatments with a consequent saving in water and energy, that hydroponic systems can substantially reduce the pollution of water sources while contributing to a reduction in water and fertilizer consumption, that hydroponic systems allow flexibility and intensification, providing high crop yield and high-quality products even in areas with adverse growing conditions, and that hydroponics is ideal for holistic control of crop development, quality and uniformity (pg. 1, right column – pg. 2, left column).
Claims 6 and 8 are rejected under 35 U.S.C. 103 as being as being obvious over Chen et al. (CN 112655709 A with a foreign translation provided by US 2024/0057598 A1) in view of Lang et al. (US 2017/0000122 A1).
Claims 1, 3-5, 7, and 9 are anticipated by Chen as described above.
Additionally, Chen discloses that 2-amino-3-methylhexanoic acid is applied to crops such as wheat [0014].
Chen does not disclose that 2-amino-3-methylhexanoic acid is applied to rice, as recited in claim 6.
Lang teaches that agricultural compositions can be applied to grain plants [0067] and that both wheat and rice are grain plants [0070].
It is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, applying 2-amino-3-methylhexanoic acid to a grain plant is known in the art (Chen) and rice is known to be a grain plant (Lang). One skilled in the art could have combined the elements as claimed (applying 2-amino-3-methylhexanoic acid to the grain plant, rice) by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., promoting growth of the rice seedling and/or promoting growth of the mature rice) to one of ordinary skill in the art. MPEP 2143.A.
Regarding claim 8, as discussed above, Chen discloses 2-amino-3-methylhexanoic acid is used on tomatoes [0025].
Chen does not disclose that 2-amino-3-methylhexanoic acid is applied to strawberries, as recited in claim 8.
Lang teaches that agricultural compositions can be applied to “fruit vegetables” (vegetables, the fruits of which are used as foods) [0067] and that both tomatoes and strawberries are fruit vegetables [0068].
It is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, applying 2-amino-3-methylhexanoic acid to a fruit vegetable is known in the art (Chen) and strawberries are known to be a fruit vegetable (Lang). One skilled in the art could have combined the elements as claimed (applying 2-amino-3-methylhexanoic acid to the fruit vegetable, strawberry) by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., promoting growth of the strawberry seedling and/or promoting growth of the mature strawberry) to one of ordinary skill in the art. MPEP 2143.A.
Claims 1 and 4-9 are rejected under 35 U.S.C. 103 as being as being obvious over Lang et al. (US 2017/0000122 A1) as evidenced by Qiang (CN 108358797 A).
Regarding claims 1 and 9, Lang discloses a composition for agricultural application which contains isoleucine (abstract). The composition is used to improve crop yield of a plant and promote growth [0080] and is applied to mature plants (abstract) [0078] [0090]-[0093].
Lang is not anticipatory because Lang discloses isoleucine, and does not disclose 2-amino-3-methyl hexanoic acid, which differ by a methyl group.
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2-amino-3-methyl hexanoic acid isoleucine
As evidenced by Qiang, the synthesis of 2-amino-3-methyl hexanoic acid is known (English translation, pg. 1, bottom).
It would have been prima facie obvious to one of ordinary skill in the art to add and/or substitute the claimed 2-amino-3-methyl hexanoic acid in addition to or in place of the isoleucine in the agricultural composition of Lang to form the claimed composition and method for promoting growth of the mature plant and increasing yield because the compounds are homologous to one another and it is known, “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.” See MPEP 2144.09.
Claim 4 is rendered prima facie obvious because Lang discloses that the composition is applied to mature plants by foliar application, meaning application to the leaves and surroundings (i.e., leaf and stem treatment) [0078] [0086] [0090]-[0093].
Claims 5-6 are rendered prima facie obvious because Lang discloses that the composition is used on rice [0067] [0070].
Claim 7 is rendered prima facie obvious because Lang discloses that the composition is used on tomatoes [0067]-[0068].
Claim 8 is rendered prima facie obvious because Lang discloses that the composition is used on strawberries [0067]-[0068].
Claim 2 is rejected under 35 U.S.C. 103 as being as being obvious over Lang et al. (US 2017/0000122 A1) as evidenced by Qiang (CN 108358797 A) and further in view of Nasholm et al. (US 2014/0245800 A1) and Verdoliva et al. (Scientia Horticulturae, 2021, 279:109896).
The 35 U.S.C. 103 rejection over Lang as evidenced by Qiang was previously discussed.
Lang does not disclose that the composition is used in promoting root generation and growth of a plant seedling by a hydroponic treatment, as recited in claim 2.
Nasholm teaches a fertilizer comprising amino acids, such as isoleucine (abstract) [0030] as a nitrogen source for plants [0006] [0016]. Nasholm teaches that the compositions are applied to plant seedlings [0046] [0057]. Nasholm further teaches amino acids as a nitrogen source for stimulating root growth [0016] to give seedlings a positive factor for growth and establishment [0004].
Since Lang generally teaches an agrochemical composition containing amino acids, it would have been prima facie obvious to one of ordinary skill in the art to apply the composition of Lang to a seedling because Nasholm teaches that a composition containing amino acids, such as isoleucine, can be applied to seedlings. An ordinarily skilled artisan would be motivated to apply the amino acid containing composition of Lang to seedlings to stimulate root growth [0016] to give seedlings a positive factor for growth and establishment [0004]. The combined teachings of Lang and Nasholm would be reasonably expected to promote root generation and growth of a plant seedling.
The combined teaching of Lang and Nasholm do not disclose that the composition is applied to a seedling by hydroponic treatment.
Verdoliva teaches treating seedlings with a hydroponic treatment (pg. 2, right column, third paragraph) and that hydroponics is a beneficial method of growing plants because the harvested products contain fewer soil particles which leads to less soil-borne disease and fewer washing treatments with a consequent saving in water and energy. Furthermore, Verdoliva teaches that hydroponic systems can substantially reduce the pollution of water sources, while contributing to a reduction in water and fertilizer consumption. Verdoliva also teaches that hydroponic systems allow flexibility and intensification, providing high crop yield and high-quality products, even in areas with adverse growing conditions and that hydroponics is ideal for holistic control of crop development, quality and uniformity (pg. 1, right column – pg. 2, left column).
It would have been prima facie obvious to one of ordinary skill in the art to treat the seedlings with a hydroponic treatment, within the combined teachings of the prior art, because Verdoliva teaches treating seedlings with a hydroponic treatment. An ordinarily skilled artisan would be motivated to use a hydroponic treatment because Verdoliva teaches that hydroponics is beneficial because it leads to less soil-borne disease and fewer washing treatments with a consequent saving in water and energy, that hydroponic systems can substantially reduce the pollution of water sources while contributing to a reduction in water and fertilizer consumption, that hydroponic systems allow flexibility and intensification providing high crop yield and high-quality products even in areas with adverse growing conditions, and that hydroponics is ideal for holistic control of crop development, quality and uniformity (pg. 1, right column – pg. 2, left column).
Claim 3 is rejected under 35 U.S.C. 103 as being as being obvious over Lang et al. (US 2017/0000122 A1) as evidenced by Qiang (CN 108358797 A) and further in view of Ogawa et al. (US 2014/0325712 A1).
The 35 U.S.C. 103 rejection over Lang as evidenced by Qiang was previously discussed.
As previously discussed, Lang discloses that the composition containing isoleucine is used to improve crop yield of a plant and promote growth [0080].
Lang does not disclose that growth of a plant seedling is promoted with the composition by a stem and leaf treatment, as recited in claim 3, because Lang teaches the use of the composition on mature plants.
Ogawa teaches an agrochemical composition containing amino acids, such as isoleucine [0158] (abstract). Ogawa teaches that the composition can be applied to plant seedlings [0087] and that it can be applied to the stems and leaves [0065]. Ogawa teaches that this is an easy way to increase the amino acid content in a plant (abstract) [0065].
Since Lang generally teaches an agrochemical composition containing the amino acid, isoleucine, it would have been prima facie obvious to one of ordinary skill in the art to apply the composition of Lang as a seedling stem and leaf treatment because Ogawa teaches that a composition containing amino acids such as isoleucine can be applied to seedlings and stems and leaves. An ordinarily skilled artisan would be motivated to apply the composition of Lang to seedlings by a stem and leaf treatment because Ogawa teaches that this is an easy way to increase the amino acid content in a plant (abstract) [0065]. The combined teachings of Lang and Ogawa would be reasonably expected to promote growth of the plant seedling.
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 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent Application No. 18/269,680.
Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims recite all of the features instantly recited for the composition and method (2-amino-3-methylhexanoic acid).
While the copending application does not teach the composition is used to promote the growth of a plant seedling and/or promote the growth of a mature plant and increase the yield, because the same compound is taught and applied to plants it is inherent that the claimed methods are accomplished by the composition.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/ASHLEE WERTZ/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612