CTNF 18/689,470 CTNF 97163 Detailed Action Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 1-7, 9, 18-23, 27-29, 31, 35, and 37 are pending. Claims 23, 27-29, 31, 35, and 37 are withdrawn. Claims 1-7, 9 and 18-22 are rejected. Information Disclosure Statement The Information Disclosure Statement (IDS) submitted on 3/6/2024 was considered by the Examiner. Election/Restrictions 08-25-01 AIA Applicant’s election without traverse of Group I (claims 1-7, 9, and 18-22) in the reply filed on 4/29/2026 is acknowledged. Claims 23, 27-29, 31, 35, and 37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. 07-30-03-h AIA Claim Interpretation Claims 1-7, 9, and 18-22 are drawn to a small molecule composition (product claims). Any usage of the product is considered intended use and does not further limit the product claims, such as claim 1, lines 1-2: “for the treatment of bacterial spot disease or bacterial speck disease in a subject in need thereof…”. Drawings 06-22 AIA The drawings are objected to because Fig. 3 is blurry . Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 3 and 22 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 3 recites the limitation "the plant" in line 1. There is insufficient antecedent basis for this limitation in the claim. Examiner recommends amending claims to ensure antecedent basis. 07-35-01 AIA Claim 22 contains the trademark/trade name s “Kocide”, “ManKocide”, and “Penncozeb” . Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph. See Ex parte Simpson , 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe copper-based bactericides and, accordingly, the identification/description is indefinite. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1-7, 9, and 18 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Scalschi et al. (Molecular Plant Pathology, 2013, 14(4), 342-355; disclosed on 3/6/2024 IDS) . Regarding instant claim 1, Scalschi teaches that hexanoic acid is a resistance inducer that protects tomato plants against Pseudomonas syringae by priming the jasmonic acid and salicylic acid pathways (see title). Various compositions with hexanoic acid (Hx) ranging from 0.6 mM to 16 mM were used in the prior art and in Figure 1, were demonstrated to show significant reductions in disease symptoms (“A” below) and in size of the bacterial population (“B” below): PNG media_image1.png 324 773 media_image1.png Greyscale . Additionally, regarding instant claim 1, and as explained in the “Claim Interpretation” section supra , instant claim 1 is drawn to a product and “for the treatment of bacterial spot disease or bacterial speck disease in a subject in need thereof” is considered intended use and not further limiting of the product claims. Because the prior art composition also comprises hexanoic acid, the prior art composition would inherently have the same properties and, therefore, the same capability of achieving the claimed uses. Regarding instant claims 2-5, which ultimately depend from claim 1 and are also drawn to product claims: “the small molecule composition”, the subject in need of treatment and the bacteria which causes the disease do not further limit the actual product of the “small molecule composition” and are therefore not further limiting. Because the prior art composition also comprises hexanoic acid, the prior art composition would inherently have the same properties and, therefore, the same capability of achieving the claimed uses. Regarding claims 6-7, the prior art teaches the use of 4 mM hexanoic acid (see Figure 1 shown supra ), which is “about 512 mg/L”, and within the range of “about 4 mg/L to about 1024 mg/L”. (Molar mass of hexanoic acid is 116.16 g/mol.) Regarding instant claims 9 and 18, the prior art teaches that Hx treatments were applied in hydroponic culture and by soil drench, which both inherently require water, an aqueous vehicle (see p. 343, right column, “Results”) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-22-aia AIA Claim (s) 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scalschi et al. (Molecular Plant Pathology, 2013, 14(4), 342-355; disclosed on 3/6/2024 IDS) as applied to claim s 1-7, 9, and 18 above, and further in view of Menkissoglu et al. (Phytopathology, 81: 1263-1270, 1991) . Determining the scope and contents of the prior art. (See MPEP § 2141.01) Schalschi fails to teach the composition of claim 1 further comprising a copper-based bactericide. Menkissoglu teaches the following on p. 1263, left column: PNG media_image2.png 176 399 media_image2.png Greyscale . Menkissoglu additionally teaches the use of 1.2 g/L of cupric hydroxide (see p. 1264, left column, “Design of field experiments”). Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02) There is not a single embodiment of hexanoic acid (also known as caproic acid) and a copper hydroxide (such as cupric hydroxide) together in the same composition in the prior art. Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143) Regarding instant claims 19 and 22, it would have been obvious to a skilled artisan to arrive at a composition combining both hexanoic acid and a copper-based bactericide, such as a copper hydroxide, as both are known to aid in plant health. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072. See MPEP 2144.06(I). Absent a showing of unexpected results, one of ordinary skill in the art would be motivated to combine both of the therapeutic agents which are taught for the same purpose in order to treat said diseases. In re Susi, 58 CCPA 440 169 USPQ 423, 426 (1971); In re Crokett, 47 CCPA 126 USPQ 186,188 (1960). Regarding instant claims 20-21, while “to treat the symptoms of bacterial spot disease or bacterial speck disease in the subject in need thereof” is considered intended use and not further limiting, the prior art does teach an amount (1.2 g/L of cupric hydroxide) encompassed by the instant range of 1 g/L to about 2.1 g/L. “In the case where the claimed ranges ’overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP 2144.05(I). A skilled artisan would have been motivated to arrive at the instantly claimed range of a copper hydroxide as a result of routine experimentation, with a reasonable expectation of success. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGHAN C HEASLEY whose telephone number is (571)270-0785. The examiner can normally be reached Monday - Friday 8:30-4:30 PM. 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, Amy Clark can be reached at 571-272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MEGHAN C HEASLEY/Examiner, Art Unit 1626 Application/Control Number: 18/689,470 Page 2 Art Unit: 1626 Application/Control Number: 18/689,470 Page 3 Art Unit: 1626 Application/Control Number: 18/689,470 Page 4 Art Unit: 1626 Application/Control Number: 18/689,470 Page 5 Art Unit: 1626 Application/Control Number: 18/689,470 Page 6 Art Unit: 1626 Application/Control Number: 18/689,470 Page 7 Art Unit: 1626 Application/Control Number: 18/689,470 Page 8 Art Unit: 1626 Application/Control Number: 18/689,470 Page 9 Art Unit: 1626
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