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 .
Status of Claims
Claims 1-17 are pending. This is the first office action on the merits.
Information Disclosure Statement
The IDSs filed 9/5/2024 and 7/7/2025 have been reviewed.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) is acknowledged.
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 1-8 and 17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural product without significantly more.
The claim(s) recite(s) glutathione and an amino acid in an agriculturally acceptable carrier. This judicial exception is not integrated into a practical application because the claims only recite natural products (i.e., glutathione, amino acid), without any additional elements that are sufficient to amount to significantly more than the judicial exception. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims either recite only natural products, without any additional elements recited, or the additional elements (e.g., agriculturally acceptable carrier) are also natural products, and/or do not change the structure, function, or other properties of the natural product as to integrate the judicial exception into a practical application. A detailed analysis follows.
The claimed invention is directed to an article comprising a composition for coating plant seeds comprising 3 g or more oxidized glutathione, and 0.012 parts by weight to 167 parts by weight of the amino acid, such as L-tryptophan, relative to 100 parts by weight of the glutathione. Additional components may be present, e.g. agriculturally acceptable carrier (e.g., claim 1). The agriculturally acceptable carrier can be water, which is also naturally occurring. These compositions are not markedly different from their closest naturally occurring counterpart because the active components in the composition are the glutathione and L-tryptophan, and the composition as a whole does not have activity which is markedly different from the natural components themselves. For example, L-tryptophan is already known to have positive benefits on enhancing the germination of seeds and emergence of seedlings; e.g., see Korkmaz at Abstract. Therefore, the composition is not markedly different from the natural products themselves.
The phrase “for coating plant seeds” within the preamble of the claim is an intended use of the positively-recited composition. The intended use in this instance does not “breathe life” into the claim because the statement merely recites how Applicants intend to use the composition and in the instant case the intended use does not affect or alter, add-to or subtract anything from the body of the claim. Therefore, the intended use recited within at least instant claim 1 is not considered a claim limitation. Subsequently, the scope of those composition claims reads on a product containing the ingredients listed in the amounts listed for each ingredient; the claim reading on a composition comprising only the claimed ingredients or a composition comprising the claimed ingredients and any additional ingredient(s).
Step 1: Is the claim to a process, machine, manufacture or composition of matter?
The claims are drawn to a composition of matter.
Step 2A, Prong 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The claims are drawn to a combination of natural products, glutathione and amino acids such as L-tryptophan. However, both the glutathione and amino acids such as L-tryptophan are themselves natural products, and there is no indication in the record of any markedly different characteristics (either structural or functional) of the composition as broadly claimed. For example, there is no evidence of record that the components present have any structural differences in the composition instantly claimed as compared to their nature-based counterparts.
Step 2A, Prong 2: Does the claim recite additional elements that integrate the Judicial Exception into a practical application?
Claims 1-8 and 17 only recite glutathione and an amino acid and an agriculturally acceptable carrier, which are naturally occurring, as discussed above.
When the nature-based product is a combination produced from multiple components, the closest counterpart may be the individual nature-based components of the combination. See MPEP 2016.04(c)(II)(A). The naturally occurring amino acid (in this case, L-tryptophan) is already known to have seed germination benefits (see reference cited above). Therefore, the instantly claimed combinations do not possess “markedly different characteristics” from that of the prior art (i.e., having a property not found in the prior art). Inherent or innate characteristic of the naturally occurring counterpart cannot show a marked difference; see MPEP 2106.04(c)(II).
Step 2B: Does the claim recite additional elements that amount to significantly more than the Judicial Exception?
Each of the elements recited in the claims are natural products and additional elements which do not integrate the judicial exception into a practical application. No other limitations are recited in the instant claims that would add significantly more to the Judicial Exception.
Accordingly, the claimed composition recites a natural product that is not markedly different in structure from naturally occurring elements and hence reads on patent ineligible subject matter under the above guidelines. See MPEP 2106.07.
To transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature. Essentially, appending conventional steps specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patent-eligible. The Court provides long standing exceptions (laws of nature, natural phenomena, and abstract ideas) to categories of patent eligibility defined in 35 U .S.C.§ 101. A claim that recites a law of nature or natural correlation, with additional steps that involve well- understood, routine, conventional activity previously engaged in by researchers in the field is not patent-eligible, regardless of whether the steps result in a transformation for the reasons cited above.
Claim Rejections - 35 USC §102(a)(1)
The following is a quotation of 35 U.S.C. 102(a)(1):
(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.
Claim 1 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 106069680 (11/9/2016)(9/5/2024)(“CN”).
CN teaches a method of growing a Fructus Fagopyri Esculenti by accelerating germination, sowing and then managing the tree seedlings. (See Abstract and claim 1). The accelerating germination step includes placing the buckwheat seed in water and subsequently placing a buckwheat seed in accelerating germination liquid and letting it soak for 40 minutes. (See claim 1).
The accelerating germination liquid used with the buckwheat seeds contains the following components in the following weight ratio: polyglutamic acid, proline, glutamic acid, sweet Propylhomoserin, vitamin C, vitamin E, glutathione, Sargassum polysaccharides, chitin and sodium selenite = 21~23 :17~19: 15~17:13~15: 19~21:10~12:0.4~0.6:0.7~0.9:2.3~2.5:1.2~1.4 (See page 4 of English Translation). Proline is an amino acid as called for in instant claim 1. Glutathione is called for in claim 1. The water is an agriculturally acceptable carrier as called for in instant claim 1.
The language of “for coating plant seeds” in claim 1 is language of intended use. A recitation of the intended use of the claimed invention, must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Note: MPEP 2111.02. In this case, CN teaches an accelerating germination liquid which is used to coat buckwheat seeds, so it is clearly capable of being used for these purposes and is actually used for the purpose of coating plant seeds by soaking the seeds as called for in instant claims 1 and 9
Regarding instant claims 6-8, the language of “for promoting an initial plant growth”, for promoting a plant growth under stress conditions” and “for increasing plant yield” are considered intended uses of the claimed composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Since CN 106069680 discloses the structural limitations of the claims to a composition for coating seeds which comprises glutathione, amino acid and water as a carrier, the composition would necessarily be capable of performing the intended uses recited.
Thus, the teachings of CN 106069680 anticipate instant claims 1 and 6-9.
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 of this title, 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.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Goodwin US 2014/0336049 (11/13/2014) in view of Korkmaz. Et al. Seed treatment with tryptophan improves germination and emergence of pepper under salinity stress, Acta Hortic. 1273 ISHS 2020, Godoy et al. Abiotic Stress in Crop Species: Improving Tolerance by Applying Plant Metabolites, Plants 2021 10(2), 186 (1/20/2021) and Nahar et al. Roles of exogenous glutathione in antioxidant defence system and methylglyoxal detoxification during salt stress in mung bean, Biolata Plantarum 59 (4): 745-756, 2015.
Goodwin teaches a seed composition comprising a seed and a first component which may be an amino acid and an agriculturally acceptable mixture of dissolved organic material. (See Abstract and [0046-0047]). Goodwin also teaches a method that comprises contacting a seed with this composition in which the contact can include coating the seed with this composition. (See Abstract and claim 47). A coated seed would have the composition be present in a surface of the plant seed as called for in instant claim 9.
Goodwin thus teaches a plant seed that is coated with a composition which can contain an amino acid as called for in instant claim 9. Goodwin also teaches the composition itself that can contain an amino acid as called for in instant claim 1.
Goodwin teaches amino acids but does not teach L-tryptophan or oxidized glutathione. Goodwin does not teach the step of growing the plants from the coated seeds. These deficiencies are made up with the teachings of Korkmaz and Godoy et al.
Korkmaz teaches that pre-treating seeds with tryptophan effectively enhances germination and the emergence of seedlings, particularly under stressed conditions such as salinity stresses or cold stresses. (See Abstract).
Tryptophan treatments prior to sowing at doses of 1- 100 micromolar significantly improves the germination percentages in seeds that are experiencing or facing salinity stress (salt stress). (See Abstract). Tryptophan concentrations of 0,1,10,100 and 1000 micromolar are taught. (See Abstract). The research demonstrates that tryptophan acts as a precursor to the broad spectrum antioxidant, melatonin, which antioxidant defends and protects seeds against oxidative damage. (See Abstract).
Korkmaz teaches growing plants by seeding seeds that have been treated and then growing the plants from the seeded treated seeds as called for in instant claim 14.
Korkmaz thus teaches a composition that promotes an initial plant growth from the seed under stress conditions as called for in instant claims 6 and 7. Growing plants by promoting an initial plant growth is called for in instant claim 15. Growing plants under stress conditions is called for in instant claim 16.
By effectively enhancing germination and the emergence of seedlings, the Korkmaz composition is used for increasing a plant yield as called for in instant claim 8. Korkmaz thus teaches a method of growing plants by promoting an initial plant growth as called for in instant claim 15.
Godoy et al. discusses the use of different natural plant metabolites which includes L-tryptophan and glutathione. (See Abstract). L-tryptophan and glutathione are identified as natural primary plant metabolites that improve tolerance to abiotic stress. (See Abstract). L-tryptophan is called for in instant claims 3 and 11 and it is an amino acid as called for in instant claims 1 and 9. Glutathione is called for in instant claims 1 and 9. Godoy teaches oxidized glutathione. (See paragraph [0002]). Oxidized glutathione is called for in instant claims 2 and 10. Godoy teaches that the application of glutathione increased the plant yield by approximately 16-17%. (See page 3 of 19 in Godoy). Godoy cites Nahar et al, and their teaching of protective roles of 1 nM glutathione applied on salt stress-affected mung beans. (See Nahar on page 746 and Abstract).
In the teachings of Godoy and Nahar, glutathione is taught to be a results-effective variable and it would be no more than routine experimentation to experiment to arrive at the claimed amounts of glutathione as called for in claims 5 and 13. With respect to claim 5 and its 3 g or more of glutathione relative to the amount of the composition used for coating 1 ton of the plant seeds, it would be no more than routine experimentation to experiment to arrive at this amount as well.
In the teachings of Godoy and Korkmaz, L-tryptophan is taught to be a results-effective variable. Korkmaz teaches tryptophan concentrations of 1,10,100 and 1000 micromolar and their effect on improving seed germination. (See Abstract) It would be no more than routine experimentation to experiment to arrive at the claimed amounts of glutathione as called for in claims 4, 12 and 17.
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Goodwin seed coating composition to have the amino acid be L-tryptophan as taught by Godoy and to add oxidized glutathione as taught by Godoy in order to have natural primary plant metabolites that have been shown to improve plants resistance to stress as taught by Godoy. It would be obvious to coat seeds with the composition and then seed the coated seeds and then grow the plants from them as taught by Korkmaz in order to promote initial plant growth even under stress conditions as taught by Korkmaz.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent Appn. No. 19/087955 in view of Godoy et al. Abiotic Stress in Crop Species: Improving Tolerance by Applying Plant Metabolites, Plants 2021 10(2), 186 (1/20/2021).
Although the claims at issue are not identical, they are not patentably distinct from each other because in each case the claims recite a composition for coating plant seeds comprising: oxidized glutathione, L-tryptophan and an agriculturally acceptable carrier and seed coated with this composition. The claims also recite a method for growing plants that comprises seeding the coated seeds and growing the plants from the seeds under stressed conditions.
The claims of Patent Appn. No. 19/087955 are drawn to coating plant seeds comprising: oxidized glutathione, L-tryptophan and an agriculturally acceptable carrier and seed coated with this composition. The claims also recite a method for growing plants that comprises seeding the coated seeds and growing the plants from the seeds under stressed conditions.
The claims of Patent Appn. No. 19/087955 differ from those of the instant application in that they do not recite oxidized glutathione. This deficiency is made up with the teachings of Godoy.
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Patent Appn. No. 19/087955 seed coating composition to add oxidized glutathione as taught by Godoy in order to have natural primary plant metabolites that have been shown to improve plants resistance to stress as taught by Godoy.
This is a provisional nonstatutory double patenting rejection.
Claims 1-17 are directed to an invention not patentably distinct from claims 1-19 of commonly assigned Patent Appn. No. 19/087955 as described above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned US Patent Appn. No. 19/087955 discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
No claims are allowed.
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SARAH CHICKOS
Examiner
Art Unit 1619
/SARAH ALAWADI/Primary Examiner, Art Unit 1619
Prosecution Insights