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 of Group I (claims 1-3, drawn to a method) in the reply filed on 6/17/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 4-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/17/2026.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-3 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. In the instant case, the specification does not provide a definition for the term “preventing.” While the term “prevent” does not necessarily mean that something is kept from ever occurring, such an interpretation is available to the Examiner that falls under the “broad and reasonable” standard for claim interpretation as set form in MPEP 2111 and thus is proper.
Claim 1-3 are 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 “reducing” influence of salt stress on a plant, does not reasonably provide enablement for “preventing” influence of salt stress on a plant. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims.
Enablement is considered in view of the Wands factors (MPEP 2164.01 (a)). These include: (1) breadth of the claims; (2) nature of the invention; (3) state of the prior art; (4) amount of direction provided by the inventor; (5) the level of predictability in the art; (6) the existence of working examples; (7) quantity of experimentation needed to make or use the invention based on the content of the disclosure; and (8) relative skill in the art.
(1 & 2) The breadth of the claims and nature of the invention: Claims 1-3 are directed to a method of reducing or preventing influence of salt stress on a plant, comprising applying at least one inventive compound of formula (I) to a plant exposed to salt stress or a plant potentially exposed to salt stress.
(3) The state of the prior art: While there are publications that describe methods of reducing or mitigating salt stress in plants, there is no evidence in the prior art that the claimed composition would prevent salt stress from ever occurring. Thus, in short, the art recognizes treatment for reduction or mitigation salt stress in plants, but not in the prevention thereof.
(4 & 6) The amount of direction provided by the inventor and the existence of working examples: Applicant has not provided examples that demonstrate that the composition claimed is effective at preventing the influence of salt stress on plants. The instant specification has demonstrated that the composition can reduce symptoms of salt stress when administered. Applicant has not demonstrated that administration of the composition would prevent salt stress from ever occurring.
(5) The level of predictability in the art: The prior art does not teach a method of preventing influence of salt stress by administering an agricultural composition. Although some methods may aid in the treatment of salt stress, there is nothing in the prior art that indicates that total prevention is possible.
(7) The quantity of experimentation: Neither the instant specification nor the state of the art have demonstrated how agricultural compositions, such as the composition claimed, can “prevent” salt stress from occurring. An undetermined number of experimental factors utilizing a composition and its method for preventing would have to be resolved by the practitioner for the following reasons: the factors are not sufficiently discussed in the specification to provide guidance to utilize the invention as claimed. See, e.g., Hao (2020), which discusses numerous pathways and mechanisms by which salt stress can induce plant injury, including inhibition of photosynthesis, disturbance of ion homeostasis, and membrane damage.
(8) The level of skill in the art: The level of skill in the art would be high, mostly likely at the Ph.D. level.
Claim Rejections - 35 USC § 112(b)
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 3 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “(wherein, in formula (I) … Z represents a C1-C8 alkyl or a C1-C8 alkoxy group)”. This renders the scope of the claim indefinite as it is unclear whether the language in the parentheses is part of the claim. For purposes of compact prosecution, the limitation is being interpreted as written without the parentheses before “wherein” and after “alkoxy group”. Examiner suggests removing the parentheses and adding a semicolon after “alkoxy group”.
Claim 3 recites the limitation “the planted plant”. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the limitation will be interpreted as “a planted plant”.
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Kobori et al. (US 2005/0070439 A1, published 3/31/2005, cited on the 8/20/2024 IDS) in view of Mukhopadhyay et al. (2020).
Regarding claim 1, Kobori teaches a plant disease controlling agent comprising a tetrazoyloxime derivative represented by the general formula (1) [claim 1]:
PNG
media_image1.png
154
159
media_image1.png
Greyscale
wherein:
X represents a hydrogen or a halogen [claim 1] (reads on n = 0 or 1)
(X corresponds to (X)n of formula (I) in the instant claim.)
A represents a tetrazoyl group with the general formula (2) [claim 1]:
PNG
media_image2.png
86
106
media_image2.png
Greyscale
Y represents an alkyl group [claim 1], wherein Y is a methyl group [claim 4]. Preferably, Y may be an alkyl group having 1 to 3 carbons [0035].
(Y corresponds to R of formula (I) in the instant claim)
Het represents a pyridyl group represented by the general formula (4):
PNG
media_image3.png
110
141
media_image3.png
Greyscale
R represents a hydrogen or a halogen (reads on m = 0 or 1); Z represents the general formula QC(=O)NH-, wherein Q is a C1-C8 alkyl or a C1-C8 alkoxy group [claim 1].
(R corresponds with of (Y)m formula (I) in the instant claim.)
(Q corresponds with Z of formula (I) in the instant claim.)
For example, Preparation Example 24 [pg.19] teaches a compound of formula (I) wherein R = methyl, n = 0, m = 0, and Z = C5 alkyl group, as shown below:
PNG
media_image4.png
201
407
media_image4.png
Greyscale
Kobori further teaches that the agricultural chemical may be applied to plants (e.g. stem and leaf application), to the soil of plants, or to the seeds [105]. Application may be achieved through spraying [Test example 1; 0236]. While Kobori does not explicitly address reducing or preventing influence of salt stress on a plant, the prior art makes obvious the application of the same chemical compound to the same patient population (i.e. plants). Thus, a property that results as a consequence of performing the claimed method to the same patient population would be expected absence evidence to the contrary. Furthermore, "[p]roducts of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Mukhopadhyay teaches that soil salinity is one of the largest global challenges in agricultural production and is expected to increase at a faster rate than now by the year 2050 [Introduction]. Mukhopadhyay further teaches that the effects of climate change, such as the rise in atmospheric greenhouse gas concentrations and the consequent increase in air temperature and decline in relative humidity can have a huge impact on the pace of soil salinity development [Introduction]. These changes can accelerate salt water intrusion into fertile soils due to sea level rise, and excess groundwater extraction in the dry regions of the world could also increase soil and groundwater salinity [Introduction]. Additionally, anthropogenic activities such as over-application of groundwater and synthetic fertilizer due to increasing global population pressure also contribute to increasing salt stress in soil [Introduction]. Thus, under BRI, all plants, particularly outdoor plants, can be considered to be potentially exposed to salt stress. As previously discussed, Kobori contemplates the application of its composition in paddy fields [0105], accordingly, this can be interpreted as reading on the limitation wherein the compound is applied to a plant potentially exposed to salt stress.
Regarding claim 2, Kobori teaches that Y may be a methyl group (corresponds with R in the instant claims) [claim 4], X may be a hydrogen (corresponds to (X)n in the instant claims, reads on n= 0) [claim 1], R may be a hydrogen (corresponds to (Y)m in the instant claims, reads on m = 0) [claim 1]. Kobori further teaches that Q may be a tert-butoxy group (corresponds with Z in the instant claim) [0042].
Regarding claim 3, Kobori teaches that the agricultural chemical may be applied to directly to plants (e.g. stem and leaf application), to the growing soil of plants, to the surface of the water in a paddy field (i.e. adding to a water medium), and to the seeds [105]. Application may be achieved through spraying [Test example 1; 0236]. Under BRI, application by spraying reads on “pouring”, “coating” and “adding”.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Brahm et al. (WO2014/079719 A1, published 5/30/2014).
Regarding claims 1-3, Brahm teaches a pesticidal composition comprising a microorganism and a fungicide [Abstract] which may comprise of picarbutrazox [pg 3, last line]. The structure of picarbutraxoz is shown below:
PNG
media_image5.png
175
225
media_image5.png
Greyscale
Picarbutrazox (i.e. tert-Butyl N-[6-[[(Z)-[(1-methyltetrazol-5 yl)phenylmethylene]amino]
oxymethyl]-2-pyridyl]carbamate) reads on a compound of formula (I) wherein R is a methyl group, n = 0 , m = 0, and Z is a tert-butoxy group (reads on claims 1 and 2). Brahm further teaches that its composition has a synergistic effect wherein the composition can increase the tolerance and/or resistance of a plant against abiotic stress [pg. 20], such as salt stress [pg. 19]. The composition of Brahm is suitable for foliar application (i.e. to plants), seed treatment, and soil treatment [pg. 21] (reads on claim 3). Brahm also teaches that abiotic stress can influence negative outcomes in plants/crops such as reduced plant vigor, lower yield, and reduced nutritional value [pg. 19]. Thus, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply a composition comprising picarbutrazox to a plant exposed to salt stress, for the purpose of reducing the aforementioned negative outcomes taught by Brahm.
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 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 13-16 of U.S. Patent No. US 12,225,907.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite the application of t-butyl (6-{[(Z)-(1-methyl-1-H-5-tetrazolyl)(phenyl)methylene]aminooxymethyl}-2-pyridyl)carbamate (also known as picarbutrazox) to plants or soil. Patent ‘907 does not address the application of picarbutrazox for the purpose of reducing or preventing the influence of salt stress, however, the claims recite the administration of the same compound to the same patient population (i.e. plants). Thus, a property that results as a consequence of performing the claimed method to the same patient population would be expected absence evidence to the contrary.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA LYNN CHI whose telephone number is (571)272-0026. The examiner can normally be reached Monday - Friday 9 am-5pm ET.
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, Brian-Yong Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AMANDA LYNN CHI/Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
Prosecution Insights