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 .
Claim(s) 1-11 are examined on the merits.
Election/Restrictions
Applicant's election with traverse of Group I, claim(s) 1-11 and species election of Poaceae (claim 5), wheat gluten (claim 6), root-knot nematodes (claim 7), Meloidogyne javanica (claim 8), second-stage juveniles (J2) of root-knot nematodes (claim 10) and application every two weeks (claim 14) in the reply filed on August 12, 2026 is acknowledged. The traversal is on the ground(s) that “the claims are linked by a common special technical feature, namely a nematicidal composition comprising an enzymatic plant-based protein hydrolysate. The method claims are directed to the use/application of the same composition recited in the elected composition claims. Accordingly, the composition and method claims share corresponding technical features and form a single general inventive concept (pg. 1 of remarks)… [and that for the elected species,] the listed alternatives are not patentably distinct species but are related embodiments of the same generic invention involving nematicidal activity of enzymatic plant-based protein hydrolysates (pg. 2 of remarks).”. This is not found persuasive because group I, claim(s) 1-11 and group II, claim(s) 12-18 are a composition and a method of using the composition which are two distinct entities and there is only one patent per invention. Furthermore, the species listed across claim(s) 5-8, 10 and 14 can originate from different plant families, crops, the species listed also has different sorts of nematodes that vary in their appearance and how the nematodes feed on plants, the nematodes can also come from a different genus, the nematodes can have various stages of life and finally, the application of the composition to the soil in various time ranges (e.g. days, weeks or months) does make a difference in the efficacy of the composition. Therefore, the restriction requirement that includes the species election is necessary.
The requirement is still deemed proper and is therefore made FINAL.
Claim(s) 12-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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(s) 1-11 are examined on the merits.
Specification
The abstract of the disclosure is objected to because it is not a single paragraph preferably
within the range of 50 to 150 words in length. The abstract of the disclosure is roughly 49
words. A corrected abstract of the disclosure within the preferred ranges disclosed is
required. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112
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.
Claim(s) 2 and 5 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 2 recites a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation of “the enzymatic plant based protein hydrolysate is derived from a plant source that comprises between 20 to 99 wt%”, and the claim also recites “preferably” and “more preferably” which are the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 5 recites a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation of “the plant based protein originates from one or more selected from the group consisting of Poaceae, Fabaceae, Brassicaceae, Asteraceae, Euphorbiaceae, seaweeds, Amaranthaceae, Cannabaceae, Arecaceae”, and the claim also recites “preferably” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al (Food Chemistry and Toxicology, (Year: 2007), vol. 72, nr. 2, pg. C103-C107).
Wang et al teaches an enzymatic wheat gluten protein hydrolysate (abstract). Wang et al teaches that protein hydrolysates are widely used as functional ingredients (pg. C103). Wang et al teaches commercial wheat gluten with 71.5% (wb) crude protein (pg. C103). Wang et al teaches the relative percent of the peptide fractions (table 1, pg. C106). Wang et al teaches that the original gluten contained 53.7% of the monomeric proteins, while the resulting hydrolysate derived from 2 h of hydrolysis had 20.9% of this fraction (pg. C106).
The Wang et al reference does not explicitly teach that the plant based protein originates from Poaceae, however, it is known in the art that wheat is found under the plant family Poaceae. In addition, the Wang et al reference does not explicitly teach using the composition for the same intended uses as claimed by the applicant, however, if the prior art reference teaches the identical structure or acts but is silent about performing the claimed function, a reasonable presumption is that the prior art structure inherently performs the same function. Moreover, 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.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. A Russian article disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties.).
"Products 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. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.").
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.
Claim(s) 1 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al (Food Chemistry and Toxicology, (Year: 2007), vol. 72, nr. 2, pg. C103-C107) in view of Bayer CropScience LP (EP 3400801 A1) and McGuire (EP 0727939 B1).
The teachings of Wang et al are above.
Wang et al does not teach that the nematicidal composition is combined with at least one other compound having nematicidal activity (as stated across claim 11 of the present invention).
Bayer CropScience LP teaches active infective stage juveniles of Meloidogyne javanica (freshly hatached J2’s from our root knot nematode tomato cultures) (under example 3, pg. 18). Bayer CropScience LP teaches nematicidal activity of Purpureocillium lilacinum strain 251 against Meloidogyne javanica (under example 2, pg. 17-18). Bayer CropScience LP teaches the uses of a composition comprising Purpureocillium lilacinum for promoting or improving plant health and/or plant growth (abstract).
McGuire teaches that specifically wheat gluten compositions are disclosed for the delivery of biological or chemical pest control agents (par. 0021, pg. 3). McGuire teaches that the present invention further relates to a gluten-based formulation comprising gluten, a pesticidally effective amount of a pest control agent (par. 0009, pg. 2).
Regarding claim 11, the wheat gluten enzymatic protein hydrolysate from wheat gluten that can be used as a functional ingredient as taught by Wang et al can include additional information that the composition can include an additional compound having nematicidal activity namely, Purpureocillium lilacinum strain 251, can have an additional effect on M. javanica as taught by Bayer CropScience LP and that the overall composition as taught by Wang et al can serve as a pesticide (nematicide) as taught by McGuire.
Moreover, the aforementioned references show that it was well known in the art prior to the effective filing date of the invention to use the claimed ingredients in compositions that act as a nematicide. It is well known that it is prima facie obvious to combine two or more ingredients each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is useful for the same purpose. The idea for combining them flows logically from their having been used individually in the prior art.
Based on the disclosure by these references that these substances are used in compositions that act as a nematicide, an artisan of ordinary skill would have a reasonable expectation that a combination of the substances would also be useful in creating compositions that act as a nematicide. Therefore, the artisan would have been motivated to combine the claimed ingredients into a single composition. No patentable invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients. See MPEP section 2144.06, In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992).
Please note: Currently pending claim 18 is drawn to a “Use” type claim and “Use” type claims are not a statutory category of invention. In the case of a rejoinder upon allowance of the claims, claim 18 cannot be rejoined as currently written.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nashara L Moreau whose telephone number is (571)272-5804. The examiner can normally be reached Monday - Thursday, 8 AM - 4 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anand U Desai can be reached at (571)272-0947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NASHARA L MOREAU Examiner, Art Unit 1655
/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655
