DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Receipt and consideration of Applicant’s amended claim set and Applicant’s arguments/remarks submitted on May 13, 2026 are acknowledged.
All rejections/objections not explicitly maintained in the instant office action have been withdrawn per Applicant’s claim amendments and/or persuasive arguments. Applicant’s claim amendments have necessitated new grounds of rejections set forth below.
Status of the Claims
Claims 1, 2, 5, 7, and 10-12 are pending and under consideration in this action. Claims 3, 4, 6, 8, and 9 are cancelled. Claims 10-12 are newly added.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 13, 2026 has been entered.
Examiner’s Suggestion
In claim 7, as the listed compounds are the contents of the extract, “the composition” in line 1 should be amended to “the extract” for better consistency with the amendment to claim 1.
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.
Claims 1, 2, 5, 7, and 10-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (naturally occurring products) without significantly more.
With regards to claims 1, 5, and 7, the claims recite a composition comprising a bioactive aqueous extract from the roots of a Parthenium argentatum Gray plant. Claim 1 also recites method steps for obtaining the extract. As noted in MPEP 2113,“even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the instant case, because the composition is the product of performing a method of extracting a bioactive composition from a plant, the resulting composition would be made up of naturally occurring compound(s), i.e. compounds naturally occurring in the plant used. With regards to the list of compounds recited in Claims 1 and 7, as evidenced by the instant Specification, each are found in the root extract of guayule (P.G. Pub., para.0115, Table 1), and thus are all naturally occurring.
The bioactive extract is necessarily naturally occurring as the components of the extract have merely been extracted, or isolated, from its natural location (i.e., from within the Parthenium argentatum root). The Specification at Table 1 evidences that each of the compounds in the claimed extract are found in mixture within the guayule root. Such a composition is not markedly different from its naturally occurring counterpart because each of the extracted compound(s) would have the same chemical structure as their naturally occurring counterpart. Furthermore, there is no indication in the specification that a composition comprising a combination of the naturally occurring compounds extracted from the plant would result in any characteristics (structural, functional, or otherwise) that are different from their naturally occurring counterparts, nor is there indication in the specification that the components of the extract result in any characteristics (structural, functional, or otherwise) different from their respective naturally occurring counterparts when extracted or removed from the plant.
Claims 2 and 10 further includes one or more additives. However, the additives also include naturally occurring products, such as plant extracts or water (agricultural carrier).
Claims 11 and 12 further include one or more latex/rubber transferase enzymes (e.g., cysteine protease). However, as evidenced by Konno et al. (The Plant Journal; published 2004), cysteine proteases in latex, such as papain, are naturally occurring (abstract). There is no indication in the Specification that that the mixture of the natural extract and the naturally occurring latex/rubber transferase enzyme (e.g., cysteine protease) would result in any characteristics (structural, functional, or otherwise) that are different from their respective naturally occurring counterparts.
This judicial exception is not integrated into a practical application because the claims do not recite any meaningful elements in addition to the naturally occurring compounds. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there is no indication in the specification that the claimed compositions of naturally occurring compound(s) have any characteristics (structural, functional, or otherwise) that are different from their respective naturally occurring counterparts.
Response to Arguments
Applicant's arguments filed May 13, 2026 have been fully considered but they are not persuasive.
(1) Applicant argues that the claims as amended are not directed merely to compounds existing in nature, but rather, to a specific, human-created bioactive aqueous extract having characteristics and utilities not possessed by the naturally occurring plant or plant roots. Applicant argues that to arrive at the claimed composition, it is necessary to perform a specific process on a specific species of plant, and each step of the process further removes the composition from anything that might be found in nature. Applicant argues that roots ground to a specific size do not exist in nature, but instead, require the hand of man and a specific selection of roots, as opposed to other parts of the plant, and size.
Applicant argues that the choice of water, instead of, for example, an organic solvent, further distinguishes the composition from any natural counterpart. Applicant argues that only water soluble components are in the composition, making the composition different in its components, as well as its functionality, from what exists in nature. Applicant further argues that it is entirely possible that the grinding and extraction process alter the chemical and/or physical characteristics of the components of the composition compared to what may be found in nature.
Applicant argues that the claimed composition is different from anything that may exist in nature (e.g., contains only water soluble components from guayule roots), and unexpectedly can stimulate plant growth, induce bud and flower formation, and protect against pests.
With regards to Applicant’s argument (1), the traversal argument is not found persuasive. The claims as currently written are not directed to a method, but rather, the composition. All of the recited compounds recited in, for example, claim 1, are compounds found naturally in mixture in Parthenium argentatum Gray plant. An extraction by placing the roots separated from the rest of the plant, milled to a size of ¼ inch or less in an aqueous solvent does not result in any characteristics (structural, functional, or otherwise) that are difference from their respective naturally occurring counterparts.
It is noted that the naturally occurring counterparts being compared against here is not the guayule plant or guayule root itself, but the specific mixture of compounds. In particular, the mixture of such compounds is naturally occurring as they are all found in mixture within the guayule plant, in particular the root (Spec., Table 1). There is no indication in the specification that a composition comprising a combination of the naturally occurring compounds extracted from the plant would result in any characteristics (structural, functional, or otherwise) that are different form their respective naturally occurring counterparts.
With regards to Applicant’s noted areas in the Specification of alleged descriptions of different functional characteristics of the claimed compositions as compared to naturally occurring guayule or guayule root (see Remarks, last paragraph of p.5 to first paragraph of p.6), the noted statements in the Specification are not found persuasive. First, as noted above, the naturally occurring counterpart being compared against here is not the guayule plant or guayule root itself, but rather, the specific mixture of compounds. Furthermore, the specific statements noted in the Specification are either conclusory statements, not demonstrating any comparison between the naturally occurring counterpart, or conclusory statements comparing the function of the claimed composition to the function of conventional pesticides, not the function of the naturally occurring counterparts.
Conclusion
Claims 1, 2, 5, 7, and 10-12 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONICA A. SHIN whose telephone number is (571)272-7138. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM EST).
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/MONICA A SHIN/Primary Examiner, Art Unit 1616
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