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 .
Response to Election/Restrictions
Applicant's election with traverse of Group I (claims 1-19, 21, 24, and 25) in the reply filed on 6/8/2026 is acknowledged. The traversal is on the ground(s) that the term “independent” in 35 USC 121 mean there is no disclosed relationship between two or more of the subjects disclosed. Applicants then assert that the three Groups contain a common relationship. Applicants also assert MPEP 803 requires distinctiveness to substantiate a restriction requirement. This is not found persuasive because as noted in the restriction requirement, MPEP § 806.05(h) allows for distinction of inventions if either or both can be show, the process of using as claimed can be practiced with another materially different product or the product as claimed can be used in a materially different process. Examiner provided an example of the compositions of Group II which are used in a materially different process, i.e. as scented devices. As such, the burden of searching multiple methods outweighs combining the groups into a single inventive concept. Similarly, the seed and the composition are distinct products as previously discussed.
The requirement is still deemed proper and is therefore made FINAL.
Claims 20, 22, 23, and 26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Applicant's election with traverse of methyl dihydro jasmonate (MDJ) in the reply filed on 6/8/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the species election has been treated as an election without traverse (MPEP § 818.01(a)). Examiner notes, should the elected species be found allowable, the search will expand to additional claimed species.
Claim Objections
Claim 1-19, 21, 24, and 25 are objected to because of the following informalities:
The graphic of structure (A) of claim 1 appears to include numbers for the carbons in the core ring. The number 3 appears to overlap the (Z)y group and appears to modify the y. Examiner also notes that the printing group may object to the numbers being too small and illegible. As the numbers appear to simply aid in defining the double bond, Examiner suggests removing them and leaving the optional double bond dotted line as the structure is clear where the bond is located.
The graphic of structure (A) also includes (Z)y3, which appears to be overlayed on the variable bond for R3. The printing group will object to overlapping functional groups in the claim graphics and Examiner suggests moving R3 to the right by widening the bottom of the ring.
Finally, the graphic of structure (A) also includes a bond on the right side of the ring which contains what appears to be half an optional double bond.
The other claims all depend from claim 1 and are therefore also objected to.
Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1-19, 21, 24, and 25 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Bedoukian et al (US 2019/0075793A1, ‘793).
For purposes of compact examination, Examiner notes that the genus of compounds in the cited prior art appear to be the same or close to the same as instantly claimed. Even so, Examiner will present the rejections based on the elected species, though the rejections will also apply to the broader genus of compounds when the search is expanded.
With regards to claims 1, 3, 4, 10, 12, 21, 22, and 25, ‘793 discloses killing agricultural pests by bringing them into contact with a toxic amount of formulation of structure (A) (see claim 1), which includes methyl dihydro jasmonate as a specifically disclosed compound (see claim 7). The applications include being applied to seeds and plants (paragraphs 107 and 108). This reads on the instant method of protecting from environmental stresses as instant dependent claim 3 allows the environmental stress to be biotic stress, and instant claim 4 allows the biotic stress to include insects. As such, application of methyl dihydro jasmonate to seeds and plants to protect from agricultural pests appears to read on the instant method.
With regards to the selection of the active from the list in the claim, where selection of one named species from a list of alternatives is all that is required to arrive at the instantly claimed subject matter, that species is anticipated. See MPEP 2131.02(III).
With regards to claim 2, the formulation in the form of an aqueous suspensions or an oil dispersion of ‘793 include from 0.5 to 50% by weight of the active (¶¶ 84-85).
With regards to claims 5 and 6, the active steps require the formulation be applied to a seed or plant in order to protect it from future stress. As such, any application appears to meet the limitation where a seed or plant may be exposed to abiotic stresses in the future. See MPEP 2112(II)
With regards to claim 7, the method taught by ‘793 is for the formulation to be applied to vegetables, field crops, ornamentals, etc (¶ 52 and claim 5).
With regards to claims 8 and 9, the loci disclosed for application include a broad range of plants, including cotton and barley (¶ 107).
With regards to claims 13 and 14, the method includes modifying the formulation with carriers or diluents (claim 16).
With regards to claims 15-19, the application of the formulation be to the soil (paragraph 86 or dueting the seeds (¶ 87).
With regards to claim 24, the formulation may be synergistic with one or more of the compounds (paragraph 25 and claims 14-15).
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.
Claim 1-19, 21, 24, and 25 are under 35 U.S.C. 103 as being unpatentable over Bedoukian et al (US 2019/0075793A1, ‘793).
While the reference is believed to be anticipatory, as discussed above, if the selection of the species or other defendant limitation requires too much picking and choosing, then it would have been obvious to one of ordinary skill in the art to select from the disclosed components, as discussed above, to result in a formulation that is used in the method of protecting plants from insects. That method would inherently include other forms of protection as it is a preventative measure, also discussed above.
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.
Claim 1-19, 21, 24, and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 10,624,341. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘341 is the patent for US 2019/0075793A1, discussed above.
The following patents include the same genus of compounds applied to the same or overlapping seeds and plants, which as discussed above, will inherently protect the plants or seeds from environmental stress:
U.S. Patent 10,111,429
U.S. Patent 10,631,536
U.S. Patent 11,224,223
U.S. Patent 11,849,737
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN J PACKARD whose telephone number is (571)270-3440. The examiner can normally be reached Mon 2-6pm and Tues-Fri 9:30am-6:30pm + mid-day flex.
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, Sahana S. Kaup can be reached at (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN J PACKARD/ Primary Examiner, Art Unit 1612
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