DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed June 30, 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 102 (Maintained)
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, 9, 11-12, and 17-18 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 which “significantly improves the tolerance of plants to high temperature, low temperature, drought and salt stress” (abstract). Chen discloses 2-amino-3-methylhexanoic acid is applied to both seedlings and mature plants and in doing so the heat injury index of plants is lower and the biomass of the overground part is higher [0025], the heat injury rate is lower, the photosynthetic index is higher, the total amino acid content is higher [0028], the root length of the wheat treated is significantly greater [0029], the mortality and salt injury index is lower [0030], the injury caused by low temperature is effectively alleviated, and the resistance to lower temperature stress is improved [0031] [0025]-[0031]. Chen teaches that “high temperatures and low temperatures seriously affect the growth and development of plants and then affect the yield and quality of plants”, “drought is one of the most important stress factors that the affect the survival, growth and distribution of plants”, and “soil salinization is a major abiotic limiting factor hindering global crop growth and productivity” [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, 7, 11-12, and 17-18 are anticipated because Chen discloses 2-amino-3-methylhexanoic acid is used on tomatoes [0025].
Response to Arguments
Applicant’s arguments filed June 30, 2026, have been fully considered but are not persuasive.
Applicant argues at pg. 6-7 that the entire teaching of Chen is directed to inducing plant immunity and resisting biotic and abiotic stress rather than serving as a plant growth regulator to promote plant growth and increase yield, therefore, Chen fails to teach or suggest the effect of 2-amino-3-methylhexanoic acid on promoting plant growth and increasing yield.
The Examiner disagrees. Chen does teach the effect of 2-amino-3-methylhexanoic acid on promoting plant growth and increasing yield both directly and through what would be understood by one of ordinarily skill in the art. In the paragraphs cited by the Examiner ([0025]-[0031]) Chen teaches the direct effect of using 2-amino-3-methylhexanoic acid for promoting plant growth and increasing yield because Chen discloses that when 2-amino-3-methylhexanoic acid is applied the biomass of the overground part is higher [0025] and the root length of the wheat treated is significantly greater [0029]. These are direct, observable effects of increased growth and yield. Furthermore, one of ordinarily skill in the art would expect that “significantly improving the tolerance of plants to high temperature, low temperature, drought and salt stress” (abstract) would increase the plant growth and increase yield. Chen teaches that “high temperatures and low temperatures seriously affect the growth and development of plants and then affect the yield and quality of plants”, “drought is one of the most important stress factors that the affects the survival, growth and distribution of plants”, and “soil salinization is a major abiotic limiting factor hindering global crop growth and productivity” [0003]. Therefore, as 2-amino-3-methylhexanoic acid is taught to improve the tolerance of plants to these stress factors ([0025]-[0031]), one would reasonably expect the growth and yield to be promoted.
Applicant argues at pg. 7-8 that Chen fails to teach or suggest the technical feature recited in claim 9 of the present application which defines 2-amino-3-methylhexanoic acid as a plant “growth regulator” for promoting growth and increasing yield because Chen teaches an “immune inducer”.
The Examiner disagrees. While the benefits of 2-amino-3-methylhexanoic acid as an “immune inducer” are taught by Chen, Chen also teaches (both directly and through what would be understood by one of ordinarily skill in the art) that 2-amino-3-methylhexanoic acid acts as a plant growth regulator for promoting growth and increasing yield, as previously discussed.
Claim Rejections - 35 USC § 103 (Maintained)
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 2, 10, and 16 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 Verdoliva et al. (Scientia Horticulturae, 2021, 279:109896).
Claims 1, 3-5, 7, 9, 11-12, and 17-18 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 discloses the growth of plant seedlings, 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 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 10 and 16 are rendered prima facie obvious because Chen discloses 2-amino-3-methylhexanoic acid is used on tomatoes [0025].
Response to Arguments
Applicant’s arguments filed June 30, 2026, have been fully considered but are not persuasive.
Applicant argues at pg. 9 that there is no motivation to combine the teachings of Verdoliva and Chen.
The Examiner disagrees. Both Chen and Verdoliva are generally directed to the growth of plant seedlings and 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, 8, 14-15, and 20 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, 9, 11-12, and 17-18 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 claims 6 and 14-15.
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 would 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 claims 8 and 20, 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 claims 8 and 20.
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 would 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.
Response to Arguments
Applicant’s arguments filed June 30, 2026, have been fully considered but are not persuasive.
Applicant argues at pg. 10 that Chen only conducted experiments on wheat under drought stress and the effects between species are unpredictable, hence the claims are not obvious over Chen in view of Lang.
The Examiner disagrees. Chen discloses a variety of crops to which the 2-amino-3-methylhexanoic acid is applied to promote growth and increase the yield including wheat and tomatoes [0014] [0025]-[0031]. 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 grain plants (i.e., wheat) and fruit vegetables (i.e., tomatoes) to promote growth and increase yield is known in the art (Chen), rice is known to be a grain plant, and strawberries are known to be fruit vegetables (Lang). One skilled in the art would have combined the elements as claimed (applying 2-amino-3-methylhexanoic acid to the grain plant, rice; or the fruit vegetable, strawberries) by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results (e.g., promoting growth and increasing yield) to one of ordinary skill in the art. MPEP 2143.A.
Claims 13 and 19 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 Verdoliva et al. (Scientia Horticulturae, 2021, 279:109896) and further in view of Lang et al. (US 2017/0000122 A1).
The 35 U.S.C. 103 rejection over Chen in view of Verdoliva was previously discussed.
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 13.
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 would 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 19, 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 19.
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 would 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.
Response to Arguments
The rejection of claims 13 and 19 over Chen in view of Verdoliva and Lang is newly applied and has not been traversed.
Claims 1, 4-9, 12, 15 and 18 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, 12 and 15 are rendered prima facie obvious because Lang discloses that the composition is used on rice [0067] [0070].
Claims 7 and 18 are 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].
Claims 2, 10, 13, 16, and 19 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) 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).
Claims 10 and 13 are rendered prima facie obvious because Lang discloses that the composition is used on rice [0067] [0070].
Claim 16 is rendered prima facie obvious because Lang discloses that the composition is used on tomatoes [0067]-[0068].
Claim 19 is rendered prima facie obvious because Lang discloses that the composition is used on strawberries [0067]-[0068].
Claims 3, 11, 14, 17, and 20 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) 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.
Claims 11 and 14 are rendered prima facie obvious because Lang discloses that the composition is used on rice [0067] [0070].
Claim 17 is rendered prima facie obvious because Lang discloses that the composition is used on tomatoes [0067]-[0068].
Claim 20 is rendered prima facie obvious because Lang discloses that the composition is used on strawberries [0067]-[0068].
Response to Arguments
Applicant’s arguments filed June 30, 2026, have been fully considered but are not persuasive.
Applicant argues at pg. 10-11 that because there is speculation that 2-amino-3-methylhexanoic acid (MIA) might inhibit isoleucine biosynthesis and that MIA is an antimetabolite, an antimicrobial agent, and an isoleucine antagonist that there would be no motivation to replace isoleucine, a natural amino acid known to be beneficial for plant growth, with MIA, a known metabolic inhibitor and antimicrobial agent.
The Examiner disagrees. “Compounds which are 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. Therefore, 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 with the expectation that compounds similar in structure (differ by only a methyl group) will have similar properties (growth promoter).
Applicant further argues at pg. 12 that when MIA is applied to plants, “remarkable growth-promoting effects are produced” which is not taught by Lang.
The Examiner notes that while a prima facie case of obviousness based on structural similarity is rebuttable by proof that the claimed compounds possess unexpectedly advantageous or superior properties (See MPEP 2144.09 VII) this is in reference to the claimed compound (in this case MIA) compared to the compound taught by the prior art (isoleucine). The applicant has not shown that MIA possesses unexpectedly advantageous or superior properties compared to isoleucine.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-17 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 (2-amino-3-methylhexanoic acid) and application method (applying to plant).
While the copending application does not explicitly 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 (claims “improves resistance of the plant to at least one stress selected from abiotic stress and biotic stress”), because the same compound is taught and applied to plants, it is inherent that the claimed results are accomplished by the composition.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments filed June 30, 2026, have been fully considered but are not persuasive.
Applicant argues at pg. 14 that the claims of copending application 18/269,680 are drawn to a method for improving plant resistance to abiotic stress in a plant and therefore are different from the specific steps and effects from those in the instant application.
The Examiner disagrees, the copending claims recite the method of applying 2-amino-3-methylhexanoic acid to a plant. As the same compound is taught and applied to plants it is inherent that the claimed results are accomplished by the composition. Furthermore, improving plant resistance to abiotic stress would reasonably be expected to promote growth and increase yield, as discussed above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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/ASHLEE WERTZ/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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