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 .
DETAILED ACTION
Claims 1-18 are currently pending and a preliminary amendment to the claims filed on 12/26/2024 is acknowledged.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 3 and 11 are objected to a minor informality.
Each of claims 3 and 11 are not written in a proper Markush-type claim format where the Markush-type claim should recite alternatives in a format such as "selected or chosen from the group consisting of A, B, and C." Alternatively, “selected or chosen from A, B or C” can be used. (see MPEP 2111.03 –II and 2117 and MPEP 2173.05(h)). Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The claimed invention is directed to a natural product without significantly more. Claims 5 and 8 recite “a plant immune resistance inducer, wherein the inducer contains compound A: any one or two of 2-amino-3-hydroxy-3—methylbutyric acid and 2-amino-3-(4-hydroxyphenyl)butyric acid; and component B: surfactant. This judicial exception is not integrated into a practical application because the claimed butyric acids are natural product that can be isolated form fungi Alternaria alternata as supported by instant publication at [0008], and the claimed surfactant also can be derived from natural product, e.g., coco-glycoside derived from plant, etc. The specification does not show markedly superior properties of the combination thereof compared with e.g., individual components. Accordingly, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 6, 7, and 9-18 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 1 recites as follows:
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However, the method omits essential steps to preparing the composition. It is not clear how the ordinary artisan prepares the composition. That is, it is not clear what active steps are actually performed to prepare the composition. See MPEP § 2172.01. Dependent claims 2-4 and 11-12 are also rejected due to the rejection of base claim 1.
Each of claims 2, 10, and 16-18 recites terms “high temperature” and “low temperature”, but which terms are relative because the high/low temperatures vary widely in the art depending on the individual situation as well as the person making the determination of factors which may mainly depend on various ingredients, their amounts in the composition, and specific physiological/environmental conditions.
Claim 3 reciting “the plant” lacks sufficient antecedent basis because base claim 1 recites “a plant immune resistance inducer”, not “a plant” itself.
Each of claims 9 and 13-15 recites “the resistance” in line 1, which lacks sufficient antecedent basis.
Each of claims 6, 7, and 13-18 directly or indirectly recites “Tween 20”. That is those claims contain the trademark/trade name “Tween 20”. 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 “Tween 20” is used to identify/describe surfactant, and, accordingly, the identification/description is indefinite.
Each of claims 3-4 and 11-12 recites the term “cash crop”, but it is not a standard, art-recognized technical term used to define structural or functional limitations of the claimed invention. “Cash crop” describes an economic intent rather than a specific biological, genetic or mechanical trait, and thus such a subjective economic label in a claim can lead to a vagueness.
Appropriate correction is requested.
Claim Rejections - 35 USC § 103
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 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 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kitayama et al. (JPH0632727A, citation is obtained from its corresponding Google English Translation).
Applicant claims the below claim 5 filed on 12/26/2024:
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For examination purpose, the limitation of “the plant immune resistant inducer” of claim 5 is an intended use, which will not limit the scope of the claim because it merely defines a context in which the invention operates. see Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Moreover, the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure." Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Thus, "recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1977). Thus, in the instant case, when the prior art teaches the claimed composition comprising components A and B, it reads on the claimed composition.
Prior Art
Kitayama discloses external preparation for skin comprising 0.01-20% of beta -branched phenylalanine derivative of formula:
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Where R1 is H or OH; R2 is lower alkyl; R3 is H or lower alkyl, and here, the preferable compound beta-methylphenylalanine derivatives include β-methyltyrosine (=2-amino-3-hydroxy-3-methylbutyric acid) (abstract on page 1 and [0011] on page 3); the preparation further contains additives such as emulsifiers (=surfactant) ([0020] on page 3); and the preparation can be provided in the form of lotion, emulsion, cream, ointment, stick, solution with organic solvent or pack, gel or non-gel ([0021] on page 3) (instant claim 5); and Kitayama discloses the said compound is used in an amount of 0.1-20% ([0019] on page 19), and however Kitayama does not expressly teach nanomole unit of 0.1-10,000nM of instant claim 8. Since Kitayama discloses 0.1-20% amount (%), such 0.1-10,000nM would be optimized from the range of prior art, in the absence of criticality evidence (instant claim 8).
In light of the foregoing, instant claims 5 and 8 are obvious over Kitayama.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kitayama et al. (JPH0632727A, citation is obtained from its corresponding Google English Translation) as applied to instant claims 5 and 8 in view of Suetsugu et al. (JPH08217662A) (citation is obtained from its corresponding Google English Translation).
However, Kitayama does not expressly teach surfactant Tween 20 of instant claims 6-7. The deficiencies are cured by Suetsugu.
Suetsugu discloses skin preparation for external use (title) comprising phenylglycine derivative and the preparation prevents spots, freckles, pigmentation into skin after sunburn while suppressing melanin production along with excellent stability and high safety (abstract on page 1) and Suetsugu discloses non-ionic surfactant includes POE sorbitan monolaurate which is Tween 20 (page 6, second para.). Although Suetsugu teaches POE sorbitan monostearate in an amount of 1.5%, the claimed amount of surfactant would be applied to Tween 20 and be optimized depending on the intended purpose, relationship with other ingredients, formulation type, etc. in the absence of criticality (instant claims 6-7).
It would have been obvious to further define surfactant of Kitayama with Tween 20 of Suetsugu in order to enhance the properties of the composition, as taught by Suetsugu.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Conclusion
All examined claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYUNG S CHANG/Primary Examiner, Art Unit 1613
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