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 Claims
The preliminary amendment of 03/07/2024 is acknowledged. Claims 1-19 are canceled and claims 20-39 are new. Claims 20-39 are currently pending and are examined on the merits herein.
Priority
The instant application filed 03/07/2024, is a 371 filing of PCT/KR2022/011689, filed 11/14/2024, which claims foreign priority to KR10-2022-0017110, filed 02/09/2022.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 03/07/2024 and 02/27/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Interpretation
Claim 20 recites a method “for alleviating drought stress”, claim 26 recites a method “for promoting plant growth”, and claim 33 recites a method “for cultivating a plant”. Such statements are simply a recitation of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). In the instant case, the preamble does not define the method in a way that sets it apart from the prior art. The structural elements of the instantly claimed method are the step of “administering” the defined compositions to a “subject” or “plant”. Thus, any method comprising these structural elements will inherently achieve the desired intended use/result of claims 20, 26, and 33. Furthermore, claims 32 and 39 define “wherein the method alleviates drought stress of the plant”. It is noted that a "‘whereby [or wherein] clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). For the sake of examination, the recitations of intended use/result will be considered inherent to a method which teaches administering the instantly claimed composition to a subject or plant.
Claim Objections
1. Claim 37 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot reference two sets of claims to different features. See MPEP § 608.01(n).
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
1. Claims 20-32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 20 and 26 recite a method “for alleviating drought stress” or “for promoting plant growth” in a “subject”. The instant specification provides no specific definition of the term “subject” nor a written description of administering the composition to any and all subjects. By its conventional meaning, a subject would include humans, bugs, rodents, etc. However, the instant specification provides no description of administering the composition to a subject such as a human. Thus, there is no written description for performing the claimed methods in a broad “subject”.
Claim Rejections - 35 USC § 112(b)
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.
1. Claims 20-32, 34 and 37 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 20 and 26 recite a method “for alleviating drought stress” or “for promoting plant growth” in a “subject”. The instant specification provides no specific definition of the term “subject”, which by its conventional meaning would include humans, bugs, rodents, etc. It is unclear how administering the claimed composition to a human subject, for example, would result in alleviating drought stress or promoting plant growth. Thus, the term subject is unclear.
Claims 21, 24, 27, 30, 34, and 37 recite a concentration in terms of a w/w % without reciting the basis for such a concentration. For example, is it based on the total weight of the administered composition or is it based on a specific component of the composition? For the sake of compact prosecution, the claims will be interpreted as concentrations based on the total weight of the administered composition.
Claim 32 recites the limitation "the plant", however, parent claim 26 only recites administering a composition to a subject, not necessarily a plant. There is insufficient antecedent basis for this limitation in the claim.
Claim 37 recites “the composition of claim 14(b)”. Given that claim 14 is cancelled, it is unclear what composition is being specifically referred to. For the sake of compact prosecution, the claim will be interpreted as referring to the composition of (b) in claim 33.
Claims 21-25 and 27-32 are further rejected by virtue of their dependency on claims 20 and 26, respectively.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 32 and 39 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As discussed in the claim interpretation section above, a "‘whereby [or wherein] clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). Thus, claims 32 and 39 do not define a structural limitation that further limits the methods of claims 26 and 33, respectively. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
1. Claims 20, 22-23, 26, 28-29, 32-33, 35-36, and 39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang, W., et al. (CN 102258055 A, 11/30/2011, ip.com translation used, PTO-892), hereinafter Zhang.
Regarding claims 20, 26, and 33: Zhang discloses a bactericidal pollution-free pesticide, comprising various amino acids (abstract; preparation embodiments; claim 1). The pesticide comprises the amino acids: tryptophan, histidine monohydrochloride, alanine, arginine hydrochloride, glycine, valine, and phenylalanine, thereby reading on the composition of (a). The pesticide also comprises glutamic acid in combination with histidine HCl, and other amino acids which include tryptophan, arginine HCl, isoleucine, glycine, alanine, and proline, thereby reading on the composition of (b). The invention is used for preventing and treating diseases on cereal crops, fruit trees and vegetables as well as increasing drought resistance and the water-fast waterlogging of cereal class, fruit tree, vegetables (abstract; claim 4). Specific examples teach applying the medicine to Fuji apple trees, potatoes, tobacco, and winter wheat (Use embodiments 1-5), which reads on administering a composition to a subject or plant
Regarding claims 22, 28, and 35: The bactericidal pollution-free pesticide comprises glutamic acid and a salt of histidine, as well as tryptophan, arginine, glycine, and proline (abstract; claim 1), which reads on the compositions of 1), 3), and 5).
Regarding claims 23, 29, and 36: The pesticide preferably comprises 24 grams of histidine HCl (claim 2). The pesticide also comprises 11 grams of tryptophan (claim 2), which is equivalent to 0.46 parts by weight based on histidine of 1 part by weight (i.e., 11÷24), which falls within the instantly claimed range of tryptophan (i.e., 0.001 to 1 part). The pesticide also comprises 57 grams of glutamic acid (claim 2), which is equivalent to 2.4 parts by weight based on histidine of 1 part by weight, (i.e., 57÷24), which falls within the instantly claimed range of glutamic acid (i.e., 0.1 to 5 parts).
Regarding claims 32 and 39: As discussed in the claim interpretation and 112(d) section above, a "‘whereby [or wherein] clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). Thus, a method reading on that of claims 26 and 33, also reads on claims 32 and 39, respectively.
2. Claims 20, 25-26, 31-33, and 38-39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peng, Z., et al. (CN 102138560 B, 08/07/2013 ip.com translation used, PTO-892), hereinafter Peng, as evidenced by Wikipedia contributors. (2026). Peanut. In Wikipedia, The Free Encyclopedia, hereinafter Wikipedia.
Regarding claims 20, 26, and 33: Peng discloses an organic nutritional drought-resistance agent used for improving the drought resistance in crops in a planting period. The preparation can be used for soaking seeds or sprayed or sprinkled (abstract), which reads on administering a composition to a subject or plant. The organic nutritional drought-resistant formulation comprises arginine and aspartic acid (abstract; embodiments; claims 1 and 3), thereby reading on the composition of (a).
Regarding claims 25, 31, and 38: The preparations are used for treating peanut crops (embodiments). Peanuts belong to the genus Arachis, as evidenced by Wikipedia.
Regarding claims 32 and 39: As discussed in the claim interpretation and 112(d) section above, a "‘whereby [or wherein] clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). Thus, a method reading on that of claims 26 and 33, also reads on claims 32 and 39, respectively.
Claims 20, 22, 25-26, 28, 31-33, 35, and 38-39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yu, J., et al. (CN 113603530 A, 11/05/2021, ip.com translation used, PTO-892), hereinafter Yu, as evidenced by Wikipedia contributors. (2026). Soybean. In Wikipedia, The Free Encyclopedia, hereinafter Wikipedia2.
Regarding claims 20, 26, and 33: Yu discloses an organic aqueous liquid fertilizer comprising amino acids (abstract), wherein the amino acids include tryptophan; histidine; alanine; arginine; aspartic acid; glycine; and phenylalanine (page 6, final para.; claim 5), thereby reading on the composition of (a). The pesticide also comprises glutamic acid in combination with histidine, and other amino acids which include tryptophan, arginine, isoleucine, glycine, alanine, aspartic acid, and proline (page 5, final para.; claim 5), thereby reading on the composition of (b). The prepared organic aqueous liquid fertilizer can be widely applied to seed dressing, leaf surface irrigation and application along with water of various corps (page 8, para. 5), which reads on administering a composition to a subject or plant.
Regarding claims 22, 28, and 35: The organic water-soluble liquid fertilizer comprises glutamic acid and histidine, as well as tryptophan, arginine, glycine, and proline (page 6, final para.; claims 1 and 5), which reads on the compositions of 1), 3), and 5).
Regarding claims 25, 31, and 38: Specific examples apply the organic liquid fertilizer to soybeans (Examples 1-8; Test method 1). Soybean is a member of the Glycine genus, as evidenced by Wikipedia2.
Regarding claims 32 and 39: As discussed in the claim interpretation and 112(d) section above, a "‘whereby [or wherein] clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). Thus, a method reading on that of claims 26 and 33, also reads on claims 32 and 39, respectively.
Claims 20, 25-26, 31-33, and 38-39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujita, I., et al. (KR 20210151190 A, 12/13/2021, ip.com translation used, PTO-892), hereinafter Fujita.
Regarding claims 20, 26, and 33: Fujita discloses a method for growing a plant comprising applying a plant activating agent to a plant (page 8, para. 7; claim 9), which reads on administering a composition to a subject or plant. The plant activating agent comprises an amino acid or salt thereof, wherein the amino acid is selected from the group consisting of glycine, glutamic acid, and histidine, specifically glycine (page 4, para. 1; page 8, para. 2; claims 1 and 4-5), thereby reading on the composition of (a).
Regarding claims 25, 31, and 38: The target plants to which the plant activating agent is applied may be Brassica plants such as Chinese cabbage, cabbage, broccoli, cauliflower, etc. (page 8, para. 9)
Regarding claims 32 and 39: As discussed in the claim interpretation and 112(d) section above, a "‘whereby [or wherein] clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). Thus, a method reading on that of claims 26 and 33, also reads on claims 32 and 39, respectively.
Claims 20, 22, 26, 28, 32-33, 35, and 39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Becerra, C. (WO 2021091365 A1, 05/14/2021, ip.com translation used, PTO-892), hereinafter Becerra.
Regarding claims 20, 26, and 33: Becerra discloses a method for the treatment of plant tissues, which comprises applying a sufficient amount of an organic mixture/product to the plant tissue to be treated (abstract; page 4, para. 1; claim 33), which reads on administering a composition to a subject or plant. The organic mixture comprises a mixture of free amino acids comprising: alanine, arginine, aspartic acid, glutamic acid, glycine, histidine, isoleucine, phenylalanine, tryptophan, valine, and proline (page 8, para. 8; Example 1; claims 3, 8 and 21), thereby reading on the compositions of (a) and (b).
Regarding claims 22, 28, and 35: The organic mixture comprises glutamic acid and histidine, as well as tryptophan, arginine, glycine, and proline (page 8, para. 8; Example 1; claims 3, 8 and 21), which reads on the compositions of 1), 3), and 5).
Regarding claims 32 and 39: As discussed in the claim interpretation and 112(d) section above, a "‘whereby [or wherein] clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). Thus, a method reading on that of claims 26 and 33, also reads on claims 32 and 39, respectively.
Claims 20, 26, 32-33, and 39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li, X. (CN 111825493 A, 10/27/2020, ip.com translation used, PTO-892), hereinafter Li.
Regarding claims 20, 26, and 33: Li discloses a multi-functional plant growth agent comprising aspartic acid, glycine, and arginine (abstract; Examples; claims 1-8), which reads on the composition of (a). The use method of the multi-functional plant growth agent includes pouring the growth agent into the sprayer, adding irrigation water or other liquid medicine, fully dissolving the growth agent in the water, then spraying onto a fruit tree (page. 7, para. 8), which reads on administering a composition to a subject or plant.
Regarding claims 32 and 39: As discussed in the claim interpretation and 112(d) section above, a "‘whereby [or wherein] clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). Thus, a method reading on that of claims 26 and 33, also reads on claims 32 and 39, respectively.
Claims 20, 22, 26, 28, 32-33, 35, and 39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang, Q. (CN 109485508 A, 03/19/2019, ip.com translation used, PTO-892), hereinafter Wang.
Regarding claims 20, 26, and 33: Wang discloses a plant root rot control method wherein an amino-acid liquid fertilizer is applied to plant roots every 15 days (abstract, claim 1), which reads on administering a composition to a subject or plant. The amino acid liquid fertilizer comprises amino acid powder containing glutamic acid, histidine, aspartic acid, proline, valine, alanine, arginine, tryptophan, phenylalanine, and glycine (pages 7-10, embodiments 1-3; claims 5-6), thereby reading on the compositions of (a) and (b).
Regarding claims 22, 28, and 35: The amino acid powder comprises glutamic acid and histidine, as well as tryptophan, arginine, glycine, and proline (pages 7-10, embodiments 1-3; claims 5-6), which reads on the compositions of 1), 3), and 5).
Regarding claims 32 and 39: As discussed in the claim interpretation and 112(d) section above, a "‘whereby [or wherein] clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). Thus, a method reading on that of claims 26 and 33, also reads on claims 32 and 39, respectively.
Claims 20, 26, 32-33, and 39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li, R., et al. (CN 1736195 A, 02/22/2006, ip.com translation used, PTO-892), hereinafter Li2.
Regarding claims 20, 26, and 33: Li2 discloses a complex nourishing type plant growth regulator and application thereof (abstract). The complex nourishing type plant growth regulator comprises an amino acid mixture comprising: valine, isoleucine, phenylalanine, arginine, glycine, glutamic acid, aspartic acid, alanine, proline, tryptophan, and histidine (pages 6-8, embodiments 1-4; claims 2-3), thereby reading on the compositions of (a) and (b). The plant growth regulator is used in methods of seed dressing, seed soaking, dipping root or leaf surface of plant (abstract; embodiments; claim 5), which reads on administering a composition to a subject or plant.
Regarding claims 32 and 39: As discussed in the claim interpretation and 112(d) section above, a "‘whereby [or wherein] clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). Thus, a method reading on that of claims 26 and 33, also reads on claims 32 and 39, respectively.
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.
1. Claims 20-24, 26-30, 32-37, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang, W., et al. (CN 102258055 A, 11/30/2011, ip.com translation used, PTO-892), hereinafter Zhang.
The teachings of Zhang are discussed above, as are the rejections of claims 20, 22-23, 26, 28-29, 32-33, 35-36, and 39.
Zhang teaches the pesticide to comprise the following raw materials by weight (i.e., grams): leucine 25-35, valine 24-30, proline 70-75, methionine 25-30, glycine 76-83, threonine 26-33, tyrosine 3-5, serine 68-74, acetylcysteine 4-7, lysine hydrochloride 40-50, arginine 83-90, histidine monohydrochloride 20-28, tryptophan 7-14, alanine 130-140, glutamic acid 55-60, isoleucine 20-30, phenylalanine 20-30, sorbitol 1200-1300, sodium hydrogensulfite 10-15, and water 20000-25000 (claim 1; preparation embodiments). The use examples specifically teach blending 2000 mL of water with 50 mL of medicine and sprinkling the plant (use embodiments 1-5).
The teachings of Zhang differ from that of the instant invention in that Zhang does not explicitly teach the administered concentration of the amino acids in claims 21, 24, 27, 30, 34, and 37.
Regarding claims 21, 27, and 34: As discussed above, Zhang teaches the concentration of the amino acids in the starting pesticide preparation as well as a method that entails dilution with water prior to administration. It would have been well within the abilities of an ordinary artisan to optimize the amount of the amino acid administered to the subject depending on the amino acids present in the pesticide and the desired effects of the final method. One could have optimized such an amount during the dilution step. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of 0.01-10% (w/w) through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 24, 30, and 37: As discussed above, Zhang teaches the concentration of the amino acids in the starting pesticide preparation as well as a method that entails dilution with water prior to administration. It would have been well within the abilities of an ordinary artisan to optimize the amount of the amino acid administered to the subject depending on the amino acids present in the pesticide and the desired effects of the final method. One could have optimized such an amount during the dilution step. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of 10 to 50% (w/w) through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
2. Claims 20, 22-23, 25-26, 28-29, 31-33, 35-36, and 38-39 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang, W., et al. (CN 102258055 A, 11/30/2011, ip.com translation used, PTO-892), hereinafter Zhang, in view of Peng, Z., et al. (CN 102138560 B, 08/07/2013 ip.com translation used, PTO-892), hereinafter Peng, as evidenced by Wikipedia contributors. (2026). Peanut. In Wikipedia, The Free Encyclopedia, hereinafter Wikipedia.
The teachings of Zhang are discussed above, as are the rejections of claims 20, 22-23, 26, 28-29, 32-33, 35-36, and 39.
As discussed above, Zhang teaches its composition for preventing and treating diseases on cereal crops, fruit trees and vegetables as well as increasing drought resistance and the water-fast waterlogging of cereal class, fruit tree, and vegetables (abstract; claim 4).
The teachings of Zhang differ from that of the instantly claimed invention in that Zhang does not explicitly teach the plants of claims 25, 31, and 38.
Peng, in the same field of endeavor, discloses an organic nutritional drought-resistance agent used for improving the drought resistance in crops in a planting period. The preparation can be used for soaking seeds or sprayed or sprinkled (abstract). The organic nutritional drought-resistant formulation comprises arginine and aspartic acid (abstract; embodiments; claims 1 and 3). The preparations are specifically used for treating peanuts (embodiments), which belong to the genus Arachis, as evidenced by Wikipedia.
It would have therefore been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to apply the composition of Zhang to peanut crops (i.e., plant of genus Arachis), since the treatment of peanuts with an amino acid drought-resistance agent is known and routine in the art as taught by Peng. One of ordinary skill in the art could have applied the known drought resistance agent of Zhang to the peanut crops of Peng, according to known methods taught by both Zhang and Peng, to predictably yield the instantly claimed invention. One of ordinary skill in the art would have had a reasonable expectation of success in making such a modification since Zhang and Peng both teach amino acid drought-resistance agents.
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.
1. Claims 20-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 13-14, and 23-24 of copending Application No. 18/852,236 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
The copending claims recite a method of enhancing resistance to a plant disease, the method comprising treating a plant body with a composition, the composition comprising valine (copending claims 1, 6, 13-14, and 23-24). Such a method reads on a method comprising administering (a) a composition comprising any one amino acid selected form valine to a subject or plant, as instantly claimed. As discussed in the claim interpretation section above, the intended use of the instantly claimed methods and copending claims do not serve to limit said methods, and therefore, do not differentiate the methods from one another.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
2. Claims 20-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 24, 26, and 31 of copending Application No. 18/723,254 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
The copending claims recite a method of enhancing plant disease resistance, the method comprising treating a plant body with a composition comprising any one or more selected from the group consisting of branched-chain amino acids, proline, glutamic acid, aspartic acid, and histidine, specifically valine (copending claims 24, 26, and 31). Such a method reads on a method comprising administering (a) a composition comprising any one amino acid selected form valine to a subject or plant, as instantly claimed. As discussed in the claim interpretation section above, the intended use of the instantly claimed methods and copending claims do not serve to limit said methods, and therefore, do not differentiate the methods from one another.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
3. Claims 20-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16, 18, 22, and 24 of copending Application No. 18/681,463 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
The copending claims recite a method comprising administering a composition comprising at least two amino acids selected from the group consisting of methionine, arginine, threonine, glutamic acid, histidine and lysine or a salt thereof to a subject (copending claims 16 and 22). Specifically, the amino acid is a combination of methionine, arginine, glutamic acid and histidine (copending claims 18 and 24), which reads on the composition of instantly claimed (b). As discussed in the claim interpretation section above, the intended use of the instantly claimed methods and copending claims do not serve to limit said methods, and therefore, do not differentiate the methods from one another.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
4. Claims 20-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 22 and 29 of copending Application No. 18/294,847 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
The copending claims recite a method comprising administering a composition comprising at least one amino acid selected from the group consisting of histidine, glutamic acid, valine and leucine or a salt thereof to a subject (copending claims 22 and 29). Several of these amino acids read on the at least one amino acid of instantly claimed (a). Thus, such a method reads on a method comprising administering the composition of (a) to a subject or plant, as instantly claimed. As discussed in the claim interpretation section above, the intended use of the instantly claimed methods and copending claims do not serve to limit said methods, and therefore, do not differentiate the methods from one another.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
5. Claims 20-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, and 15 of copending Application No. 19/165,835 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
The copending claims recite a method comprising applying a composition to a plant, wherein the composition comprises any one amino acid selected from the group consisting of alanine, asparagine, aspartic acid, glutamine, glycine, histidine, isoleucine, leucine, glutamic acid, phenylalanine, serine and threonine (copending claim 1). Several of these amino acids read on the at least one amino acid of instantly claimed (a). Similarly, copending claim 7 recites a method of applying a composition to a plant also comprising several amino acids which read on those of (a). Copending claim 15 recites a method comprising applying a composition to a plant wherein the composition comprises (1) arginine, histidine; and others. Such a composition reads on the instantly claimed composition of (a). Thus, such methods read on a method comprising administering the composition of (a) to a subject or plant, as instantly claimed. As discussed in the claim interpretation section above, the intended use of the instantly claimed methods and copending claims do not serve to limit said methods, and therefore, do not differentiate the methods from one another.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616