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 . Claims included in prosecution are claims 1-15.
Response to Restriction Requirement
Applicant's election with traverse of Group I, claims 1-15, and methyl dihydrojasmonate as the compound of structure (A) in the reply filed on 8/18/26 is acknowledged.
The traversal is on the ground(s) that examining the different groups identified in the restriction requirement mailed on 6/26/26 together does not constitute a serious burden.
This is not found persuasive because burden consists not only of specific searching of classes and subclasses, but also of searching multiple databases for foreign references and literature searches. Burden also resides in the examination of independent claim sets for clarity, enablement and double patenting issues. Further, a reference that would anticipate the invention of one group would not necessarily anticipate or even make obvious another group. Finally, the consideration for patentability is different in each case. Thus, it would be an undue burden to examine all of the above inventions in one application and the restriction for examination purposes as indicated above is deemed proper.
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 16-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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. Claim(s) 1-2 and 4-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scheer et al. (US 2015/0230462, Aug. 20, 2015) (hereinafter Scheer).
Scheer discloses a method comprising exposing a seed to a formulation containing methyl dihydrojasmonate (MDHJ) at an amount and duration effective for improving a stress tolerance characteristic of the seed (Abstract). The jasmonate may be in a solid form which is constituted into a liquid treatment medium (satisfies claim 11) (¶ [0018]). Particular aspects of the invention a method of seed treatment comprising exposing a seed to methyl dihydrojasmonate (MDHJ) at an amount and duration effective for improving a stress tolerance characteristic of a seedling or plant resulting from the seed (¶ [0022]). The MDHJ may be included in a concentration of 2-10% (satisfies claim 2) (¶ [0051]). MDHJ may be applied to seeds or adult plants of a variety of crops such as cotton and legumes (satisfies claim 4-6) (¶ [0069]). To improve stress tolerance characteristics, the MDHJ may be applied alone or in a formulation comprising other elements, compounds, or substances. Suitable compounds that may be used include wetting agents, adjuvants, emulsifiers, dispersants, spreaders, stickers, pastes, anchorage agents, fixatives, extenders, coating agents, buffering agents, plant nutrients, absorptive additives, and disintegrants (satisfies claim 10) (¶ [0070]). Particularly advantageous forms of MDHJ administration include foliar sprays and root solutions in soil (satisfies claim 12) (¶ [0081]). In an embodiment, the liquid medium comprises an aqueous solution comprising surfactants (¶ [0094]). Germinated seeds may be treated before planting (satisfies claim 13) (¶ [0096]). Embodiments include defense activating applications of MDHJ to improve one or more stress tolerance characteristics (¶ [0110]). Defense activation of MDHJ is assessed through measures such as reduced senescence (¶ [0112]).
The prior art is not anticipatory insofar as this combination must be selected from different lists/locations in the reference. It would have been obvious, however, to have formulated a method for controlling or reducing senescence in a plant or seed comprising applying to at least a portion of said plant or seed a composition comprising methyl dihydrojasmonate, as instantly claimed, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. See MPEP § 2143 (I)(A).
Regarding claim 1 reciting a method of controlling or reducing senescence in a plant or seed, as discussed above, Scheer’s discloses a method of seed treatment comprising exposing a seed to methyl dihydrojasmonate (MDHJ) at an amount and duration effective for improving a stress tolerance characteristic of a seedling or plant resulting from the seed. Applications include defense activating applications of MDHJ to improve one or more stress tolerance characteristics where defense activation of MDHJ is assessed through measures such as reduced senescence. This satisfies the limitation of controlling or reducing senescence in a plant or seed as instantly claimed.
Regarding claim 2, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). As discussed above, MDHJ may be included in a concentration of 2-10%. Accordingly, because the range recited in the instant claims overlaps with the range disclosed by Scheer, the range disclosed by Scheer meets the instantly recited limitations.
Regarding claims 4-6, as discussed above, MDHJ may be applied to seeds or adult plants of a variety of crops such as cotton and legumes. Accordingly, methods/applications which target such plants/crops would have been obvious.
Regarding claim 7, as discussed above, Scheer’s discloses a method of seed treatment. As such, a method comprising applying the composition to a seed would have been obvious.
Regarding claims 8-9, as discussed above, Scheer’s discloses utilizing MDHJ. Accordingly a composition comprising such a compound would have been obvious.
Regarding claim 10, as discussed above, MDHJ may be applied in a formulation comprising other elements, compounds, or substances. Suitable compounds that may be used include wetting agents, adjuvants, emulsifiers, dispersants, spreaders, stickers, pastes, anchorage agents, fixatives, extenders, coating agents, buffering agents, plant nutrients, absorptive additives, and disintegrants. Accordingly, a composition comprising such as components would have been obvious.
Regarding claim 11, as discussed above, the jasmonate may be constituted into a liquid treatment medium. Accordingly, a composition comprising a liquid medium would have been obvious.
Regarding claim 12, as discussed above, particularly advantageous forms of administration include foliar sprays and root solutions in soil. Accordingly, a composition applied using such methods would have been obvious.
Regarding claim 13, as discussed above, germinated seeds may be treated before planting. Accordingly, a composition applied to such seeds would have been obvious.
Regarding claim 14, as discussed above, Scheer’s discloses a method of seed treatment comprising exposing a seed to methyl dihydrojasmonate (MDHJ) at an amount and duration effective for improving a stress tolerance characteristic of a seedling or plant resulting from the seed. Applications include defense activating applications of MDHJ to improve one or more stress tolerance characteristics where defense activation of MDHJ is assessed through measures such as reduced senescence. This satisfies the limitation of inducing tolerance in the plants or seeds to senescence as instantly claimed.
Accordingly, the teachings of Scheer render obvious claims 1-2 and 4-14.
2. Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scheer et al. (US 2015/0230462, Aug. 20, 2015) (hereinafter Scheer) in view of Miryeganeh (Genes, 2021, 12, 143) (hereinafter Miryeganeh).
The teachings of Scheer are discussed above.
Scheer differs from the instant claim insofar as not explicitly disclosing wherein plant or seed degradation or degeneration resulting from senescence comprises plant death.
However, Miryeganeh senescence refers to the process of growing old and is associated with decay and mortality or decreased fertility with age and is a very widespread concept for plants (Pg. 1). Reproductive senescence leads to the whole plant senescence (Pg. 3). Reproductive senescence initiates a gradual death and has been called the “natural cause of death” in plants (Pg. 3).
As discussed above, Scheer’s applications include defense activating applications of MDHJ to improve one or more stress tolerance characteristics where defense activation of MDHJ is assessed through measures such as reduced senescence. Accordingly, where Scheer’s methods/applications reduce senescence, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to have formulated the methods/applications of Scheer to treat plant death resulting from senescence since reproductive senescence is the “natural cause of death” in plants as taught by Miryeganeh.
Accordingly, the combined teachings of Scheer and Miryeganeh render obvious claim 3.
3. Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scheer et al. (US 2015/0230462, Aug. 20, 2015) (hereinafter Scheer) in view of Scheer et al. (US 2009/0082453, Mar. 26, 2009) (hereinafter Scheer II).
The teachings of Scheer are discussed above.
Scheer differs from the instant claim insofar as not explicitly disclosing wherein the MDHJ acts systemically.
However Scheer II discloses methods and formulations for treating and preventing biotic attack in plants comprising methyl dihydrojasmonate (Abstract). Particularly advantageous forms of administration include foliar sprays and root solutions in soil (¶ [0045]). It was found that once applied MDHJ acts systemically (¶ [0053]).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to have formulated the methods/applications of Scheer to systemically result in senescence tolerance since Scheer’s methods/applications utilize foliar sprays and root solutions in soil as means to administer MDHJ and such application methods result in MDHJ acting systemically as taught by Scheer II.
Accordingly, the combined teachings of Scheer and Scheer II render obvious claim 15.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-38 of copending Application No. 19/078,724 in view of Scheer et al. (US 2015/0230462, Aug. 20, 2015) (hereinafter Scheer).
Although the claims at issue are not identical, they are not patentably distinct from each other because they both disclose a method of controlling or reducing senescence in a plant or seed, said method comprising applying to at least a portion of said plant or seed a composition comprising one or more compounds represented by structure (A) wherein such compound may be methyl dihydrojasmonate.
The copending claims differ insofar as further reciting the use of biostimulants/fertilizers.
However, Scheer discloses a method comprising exposing a seed to a formulation containing methyl dihydrojasmonate (MDHJ) at an amount and duration effective for improving a stress tolerance characteristic of the seed (Abstract). Particular aspects of the invention a method of seed treatment comprising exposing a seed to methyl dihydrojasmonate (MDHJ) at an amount and duration effective for improving a stress tolerance characteristic of a seedling or plant resulting from the seed (¶ [0022]). Seed treatments with MDHJ may be combined with other products, including fertilizers, and growth stimulators (¶ [0080]). Embodiments include defense activating applications of MDHJ to improve one or more stress tolerance characteristics (¶ [0110]). Defense activation of MDHJ is assessed through measures such as reduced senescence (¶ [0112]).
Accordingly, it would have been obvious for one of ordinary skill in the art to have modified the method of the copending claims to comprise the use of fertilizers and stimulants in combination with MDHJ since this is a known combination for use in seed treatment methods for improving a stress tolerance characteristic of a seed where applications include defense activating applications of MDHJ to improve stress tolerance characteristics where defense activation of MDHJ is assessed through measures such as reduced senescence as taught by Scheer.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Claims 1-15 are rejected.
Claims 16-22 are withdrawn.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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/A.A./Examiner, Art Unit 1612
/LEZAH ROBERTS/Primary Examiner, Art Unit 1612
