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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 30 March 2026 is acknowledged. The traversal is on the ground(s) that that the restriction requirement has not established that examination of the claims together would impose serious search and/or examination burden. This is not found persuasive, because search is not the sole basis for examination burden see item (e) on page 3 of the restriction requirement mailed 28 January 2026 which states that burden can arise if the inventions are likely to raise different non-prior art issues under 35 USC 101 and/or 35 USC 112 (a) / first paragraph. In the instant case, the two inventions raise very different issues regarding 35 USC 112 (a) / first paragraph. Moreover, the prior art that likely could apply to claim 18 (A CND compound) very well may not apply to the claims regarding modifying plant characteristics using CNDs. To state it more directly, patentability of the claims of group I will likely depend on compliance with 35 USC 112 (a) / first paragraph whereas patentability of the claim of group II will likely depend upon compliance with 35 USC 102 and 103. To examine these groups together is burdensome.
The requirement is still deemed proper and is therefore made FINAL.
Claim 18 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 30 March 2026.
Claim Status
Claims 1-19 are pending.
Claim 18 is withdrawn from consideration.
Claims 1-17 and 19 are examined on the merits.
Title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The claims are explicitly drawn to carbon nanodots that are not associated with nucleic acids. Hence, the title is not descriptive of the claims.
The following title is suggested: TREATMENT OF PLANTS WITH CARBON NANODOTS TO IMPROVE PLANT PHENOTYPES.
Specification
The disclosure is objected to because of the following informalities: Example 17 and the caption of Figure 11 fail to disclose what plant species was used for the experiment measuring leaf area in plants treated with CND cores and CND-glucose.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Indefiniteness
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.
Claim 1-17 and 19 is 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 pre-AIA the applicant regards as the invention.
Claim 1 is drawn to “A method of modifying one or more characteristics of a plant” without reciting any point of comparison. In the absence of a point of comparison, it is unclear how a person would even determine if a plant is “modified.” Claims 2-17 are rejected from depending from an indefinite claim and failing to recite additional limitations that would render the claims definite.
Claim 19 is drawn to “A plant comprising a CND compound according to claim 42.” There is no claim 42, so the metes and bounds of the claim cannot be determined.
Lack of Written Description
The following is a quotation 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.
Claims 1-17 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims are broadly drawn to methods of modifying: 1) any characteristics of a 2) plant of any species by treating with a CND within the genus of CNDs listed specified in claim 1 via 3) any means of introducing the CNDs to the plant 4) at any concentration of CNDs introduced. Claims 2, 3, 6 specify which characteristics and that they are improved. Claim 5 requires that the method must be practiced in wheat, tobacco, sorghum, maize, soybean, or rice (Working examples of CNDs modifying characteristics of the plant are only provided in wheat; tobacco examples only demonstrate uptake of the CNDs). Claim 16 requires that the CND compound must be provided to the plant at less than 100mg/L. Claim 17 requires that the CND must be administered to the plant by spraying leaves, dipping the plant, or contacting the roots of the plant with a solution or suspension of CNDs (there is no requirement on the concentration of CNDs or the number of treatments).
The instant disclosure describes CND treatment of wheat at 50mg/L (It is not completely clear that all experiments regarding growth characteristics were done at this concentration, but seems this is the case. If this is incorrect, please clarify on the record.) can lead to increased growth and yield. Figure 6 seems to indicate that weekly foliar treatment of wheat with CNDs can lead to improved growth, but a single treatment does not. Example 17 indicates that CND treatment can improve photosynthetic activity of a plant, but fails to indicate what plant species the experiments were conducted in. They also demonstrate that CND treatment of wheat plants can lead to increased ear/head weight and yield (The treatment regimen was not disclosed; please clarify on the record). The Examiner does acknowledge that the Examples describe experiments in species in addition to wheat including tobacco and Arabidopsis, among other, but it does not appear that any of these experiments measured the phenotypic impact of CNDs on the plants.
These descriptions are insufficient. It is critical to understand the context of the art in which an application is filed to assess whether the claimed invention is adequately described. The prior art at the effective filing describes that nanomaterials can impact plant growth Mukherjee et al 2016 (Frontiers in Plant Science 7: 172, p. 16). They overall describe that different nanomaterials can affect the growth of different plant species in a variety of ways. They provide little description regarding CNDs impact on plant growth. In fact, the teachings of the prior art on the effect of CNDs in plant is quite limited compared to what was known about other nanomaterials. Petersen et al 2014 (Environ Sci Technol 48: p. 4226-4264) propose a model that nanomaterials can inhibit plant growth by depleting nutrients from the plant (Figure 3). Chen et al 2016 (Nanotoxicology 10:6, p. 818-828) that water soil-grown maize seedling with CNDs at 1000 mg/L or higher can inhibit growth (Figure 2). Post filing art has demonstrated that the ways in which CNDs impact plant growth still in not entirely straightforward. Yan et al 2021 (Ecotoxicology and Environmental Safety 216: p.1-8) describe that CND treatment of Arabidopsis at a concentration as low as 5 mg/L can impair growth (Figure 2). This is two orders of magnitude lower than was required to impair maize growth. To add further confusion to the state-of-the-art Chen et al 2018 (Environ Sci Nano. 5: p. 2672-2685) found that CNDs at a concentration of 62.5 mg/L does not impair growth of Arabidopsis, contrary to the teachings of Yan et al.
The prior art indicates a limited knowledge of how CNDs affect growth of different plant species. The post-filing art demonstrates that limited knowledge at the effective filing date would have subsequently impacted the ability of a person of skill in the art to practice the invention throughout the broad scope of the claims. A person of skill in the art would not have recognized that Applicant was in possession of the broad scope of the claims at the effective filing date.
Given the broad scope of the claimed genus, the lack of working examples and the failure to describe the structures required to confer the claimed function, one of skill in the art would not have recognized that Applicant was in possession of the claimed genus at the time of filing.
Scope of Enablement
Claim 1, 4, 5, 7-17, and 19 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for using the claimed methods and plants that lead to or have improved phenotypes, does not reasonably provide enablement for using the claimed methods and plants that lead to or have worsened or no phenotypic differences. Note that claim17 has no requirement for any phenotypic difference. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
The claimed invention is not supported by an enabling disclosure taking into account the Wands factors. In re Wands, 858/F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988). In re Wands lists a number of factors for determining whether or not undue experimentation would be required by one skilled in the art to make and/or use the invention. These factors are: the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples of the invention, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claim.
The claims are broadly drawn to methods of modifying one or more characteristics of a plant or a plant comprising a CND compound with no requirement for a phenotypic alteration.
The Specification teaches that some treatment protocols of wheat plants with CNDs can lead to some improved growth characteristics. See lack of written description rejection above for more specifics.
The Specification does not teach how a plant with worsened phenotypic characteristic can be useful.
The state-of-the-art fails to make up for the deficiencies of the Specification regarding how a plant with worsened phenotypic characteristic can be useful.
Given the lack of guidance in the instant specification, undue trial and error experimentation would have been required for one of ordinary skill in the art to use the claimed subject matter throughout the broad scope of the claims.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R KEOGH whose telephone number is (571)272-2960. The examiner can normally be reached M-Th 7-4:30, half day on Fridays.
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/MATTHEW R KEOGH/Primary Examiner, Art Unit 1663
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