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
Applicants’ election without traverse of Group I, claims 1-6 and 16, in the reply filed on 08/04/2026 is acknowledged. Accordingly, claims 7-15 are withdrawn as being drawn to a non-elected invention.
Status of Claims
Receipt of Remarks filed on 08/04/2026 is acknowledged. Claims 7-15 are withdrawn as set forth above. Claims 1-6 and 16 are examined on the merits herein.
Priority
The instant application filed 09/05/2024, is a continuation of PCT/JP2023/008450, filed 03/07/2023, and claims foreign priority to JP2023-015411, filed 02/03/2023, and JP2022-034052, filed 03/07/2022.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 09/05/2024 and 05/08/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Interpretation
The recitation of an “agricultural composition” in the preamble of each claim is being treated as the intended use of the instantly claimed composition. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See MPEP 2111.02. In the instant case, the claims define a structurally complete composition, with nothing in the claim body to differentiate between an agricultural composition and a non-agricultural composition. As such, any prior art reference teaching every element of the claim body, regardless of the intended use, will meet the claim limitations.
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.
Claims 1, 3, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hong, K., et al. (KR 20210048903 A, 05/04/2021, google patent translation used, PTO-892), hereinafter Hong.
Hong discloses cosmetic composition comprising, glutathione as an active ingredient (abstract).
Regarding claim 1: The composition of Hong comprises allantoin and glutathione (Ex. 1-3; claims).
Regarding claim 3: The composition of Example 1 comprises 5% by weight of allantoin and 0.5% by weight of glutathione. In the case where glutathione is 100 parts by mass, allantoin is present at 1,000 parts by mass with respect to the glutathione, which reads on the instantly claimed range of 40 parts by mass or more.
Regarding claim 5: The compositions of Examples 1 through 3 comprise 5% by weight of allantoin, which falls within the instantly claimed range (i.e., 5-50%).
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao, X., et al. (CN 111789781 A, 10/20/2020, google patent translation used, PTO-892), hereinafter Zhao.
Zhao discloses a compound peptide emulsion with antioxidant effects which comprises 8-11 parts glutathione and 3-6 parts allantoin (abstract).
Regarding claim 1: The composition of Zhao comprises glutathione and allantoin (abstract; Ex. 1-3; claim 1).
Regarding claim 3: The composition of Example 2 comprises 4.2 parts of allantoin and 9.7 parts of glutathione. In the case where glutathione is 100 parts by mass, allantoin is present at 43.3 parts by mass with respect to the glutathione, which reads on the instantly claimed range of 40 parts by mass or more.
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. Claims 1-6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Mouri, T., et al. (US 20180127326 A1, 05/10/2018, PTO-892), hereinafter Mouri, in view of Zhang, W., et al. (CN 106305723 A, 01/11/2017, google patent translation used, PTO-892), hereinafter Zhang.
Mouri discloses a fertilizer composition for application to leaves of a plant (abstract).
Regarding claim 1: The composition of Mouri comprises oxidized glutathione (GSSG) (abstract; [0003]; [0014]; Ex. 1; claim 1).
Regarding claim 2: The glutathione is oxidized glutathione (GSSG) (abstract; [0003]; [0014]; Ex. 1; claim 1).
Regarding claim 4: Formulation A comprises 10.6% by mass of oxidized glutathione while Formulation B comprises 17.2% by mass of oxidized glutathione (Ex. 1), both of which fall within the instantly claimed range (i.e., 3-20 mass%).
Regarding claim 6: The composition of Mouri further comprises one or more fertilizer components, wherein the fertilizer element comprises nitrogen (“nitrogen source”), phosphorus (“phosphorus source”), and potassium (“potassium source”). (abstract; [0014]; claim 2). Specifically, Formulations A and B comprises ammonium sulfate, monobasic ammonium phosphate, and potassium sulfate as the nitrogen, phosphorus, and potassium sources, respectively (Tables 1-2; claim 6), each of which read on inorganic salts.
Regarding claim 16: The fertilizer composition according to one or more embodiments may comprise reduced glutathione. In such a case, the total mass of oxidized glutathione is preferably 70% by mass or more relative to the total mass of oxidized glutathione and reduced glutathione contained in the fertilizer composition ([0029]).
Mouri further teaches that GSSG is useful as an active component of a plant growth regulator due to its ability to increasing the number of seeds and the number of flowers of the plant or increasing the number of lateral shoots or tillers of a plant ([0006]). Applying a fertilizer element in combination with GSSG to plant leaves promotes plant growth by causing the GSSG and the fertilizer element to act synergistically and provided a significantly enhanced plant growth promotion effect ([0013]).
The teachings of Mouri differ from that of the instantly claimed invention in that Mouri does not explicitly teach the allantoin of claims 1, 3, and 5.
Zhang discloses a compound plant growth regulating composition containing allantoin. The composition contains active ingredient A and active ingredient B, wherein the active ingredient A is the allantoin (abstract). Active ingredient B is selected from various widely used plant growth regulators (abstract; p. 2, para. 6). Allantoin is an excellent plant growth regulator which stimulates plant growth, and has significant yield-increasing effects on wheat, citrus, rice, vegetables, soybeans, etc., and has fruit-fixing and early-maturing effects (p. 2, para. 5). A single plant growth regulator has a single effect on promoting the growth of crops, and the compounding of plant growth regulators with different mechanisms of action can effectively solve this problem. The active ingredient A and active ingredient B have different action mechanisms, and the mutual compounding has a good synergistic effect within a certain range (p. 2, para. 7). The active ingredient A and the active ingredient B have a preferred weight ratio of 60:1～1:80; however, these ratios vary depending on the identity of active ingredient B (p. 2, para. 11). Zhang teaches several examples for determining the growth promoting effect of allantoin in combination with different plant promoters as active ingredient B, and the method for determining the proportion between the two which has the best effect (p. 4-5, Examples 2-8). In various formulation embodiments the composition comprises 0.01-20% of active ingredient A (i.e., allantoin) (p. 2-3, para. 16-2).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to incorporate the allantoin of Zhang into the composition of Mouri, since allantoin is a known and routine plant growth regulating agent in the art as taught by Zhang. One of ordinary skill in the art would have been motivated to incorporate allantoin into the composition of Mouri since the composition of Mouri comprises a plant growth regulator (i.e., GSSG) and has the effect of promoting plant growth while Zhang teaches allantoin as an excellent plant growth regulator which stimulates plant growth, and has significant yield-increasing effects on crops. Furthermore, Zhang teaches that it is advantageous to compound allantoin with other known plant growth promotors to produce synergistic effects. Thus, one of ordinary skill in the art would have found it obvious to combine the known and effective plant growth regulator of allantoin with the known and effective plant growth regulator of glutathione, with a reasonable expectation of success in providing a composition that enhances plant growth. Such a composition reads on that on instant claim 1.
Regarding the proportion of allantoin and glutathione as recited in claim 3, it would have been prima facie obvious to one of ordinary skill in the art to optimize such a proportion to fall within the instantly claimed range, since the proportion of actives is a results effective parameter. The optimization of a result effective parameter is considered within the skill of the artisan. See, In re Boesch and Slaney (CCPA) 204 USPQ 215. This is what research chemists do, optimization of result-effective variables through routine experimentation (MPEP 2144.05 IIA and B). Specifically, Zhang teaches that it is important to optimize the proportion of allantoin to various other known plant promoting actives in order to obtain the best effect, and that such a proportion is dependent on the respective plant promoting active used. As such, one of ordinary skill in the art would have been motivated to optimize the proportion of allantoin to glutathione following the above combination, depending on the desired effect of the composition. Such an optimization could have been performed using no more than routine experimentation via the optimization methods taught by Zhang.
Regarding the amount of allantoin as recited in claim 5, it would have been prima facie obvious to one of ordinary skill in the art to provide allantoin in the combined composition at an amount of 0.01-20% by weight, since such an amount is a known and effective amount to include in a plant growth regulating composition, as taught by Zhang. Such an amount overlaps with the instantly claimed range (i.e., 5-50 mass%). 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. Moreover, it would have been obvious to one of ordinary skill in the art to optimize the amount of allantoin in the combined composition depending on the desired effect of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed range through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modifications since both Mouri and Zhang teach plant growth promoting compositions and Zhang teaches methods of optimizing the amount and ratio of allantoin when combining it with other plant growth regulating compounds.
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.
Claims 1-6 and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18/819,938. Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 1 recites a method comprising granulating a mixture of glutathione and a water-soluble nitrogen containing fertilizer component. The water-soluble nitrogen fertilizer component is allantoin (copending claims 2-3). As such an agricultural composition comprising glutathione and allantoin is anticipated by the copending claims.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims allowed.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/ERIN E HIRT/Primary Examiner, Art Unit 1616
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