DETAILED ACTION
This communication is a second office action final rejection on the merits.
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 .
Response to Amendment
The amendment filed on 11/10/2025 has been entered. Claims 1, 6-8, and 13-15 have been amended, and Claims 2-5, 9-12, and 16-19 remain as previously presented. Applicant’s amendments to the Specification and Claims have overcome almost each and every objection set forth in the Non-Final Rejection mailed 08/11/2025.
Specification
The disclosure is objected to because of the following informalities:
In ¶30, the phrase “may be selected from lavender lavender” should read “may be selected from lavender”.
Appropriate correction is required.
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.
(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 1-2, 4, 6-8, 10, 13-15, and 17-18 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Notaguchi (US 11129337 B2).
Regarding Claim 1, Notaguchi discloses a grafted plant body (1; shown in Fig. 2) between a rootstalk and a scion (Column 15 Lines 60-67 states that a grafted plant body 1 is provided comprising a first plant tissue as a scion and a second plant tissue as a rootstalk. Fig. 2 shows an example where a tomato plant tissue is used as a scion and a Cucurbitaceae family plant tissue is used as a rootstalk.), wherein one of the rootstalk or the scion comprises a flower, fruit, or vegetable from a first plant species or cultivar (Fig. 2 shows that the scion can comprise a vegetable from a tomato plant.), and the other one of the rootstalk or the scion comprises an animal resistant portion of a second plant species or cultivar (Fig. 2 shows that the rootstalk can comprise the rootstalk of Cucurbitaceae family, which comprise cucurbitacins that serve as a natural defense mechanism against herbivores.).
Regarding Claim 2, the system of Notaguchi, as shown above, discloses the limitations of Claim 1.
Notaguchi further discloses that the animal resistant portion is a deer resistant portion (Fig. 2 shows that the rootstalk can comprise the rootstalk of Cucurbitaceae family which comprise cucurbitacins that serve as a natural defense mechanism against herbivores, such as deer.).
Regarding Claim 4, the system of Notaguchi, as shown above, discloses the limitations of Claim 1.
Notaguchi further discloses that the rootstalk is grafted to the scion via one or more graft mediums (Claim 1 states that a graft medium is provided between the first plant tissue as a scion and a second plant tissue as a rootstalk [shown in Fig. 2].).
Regarding Claim 6, the system of Notaguchi, as shown above, discloses the limitations of Claim 1.
Notaguchi further discloses that the animal resistant portion of the second plant species or cultivar is the flowers or foliage of the second plant species or cultivar (Column 15 Lines 60-67 states that a grafted plant body 1 is provided comprising a first plant tissue as a scion and a second plant tissue as a rootstalk. Claim 1 states that each of the two different family tissues may belong to the Lavandula genus. This means that the second plant species or cultivar may be a Lavandula plant which includes the animal-repelling substances linalool and linalyl acetate in its flowers, stems, and leaves.).
Regarding Claim 7, the system of Notaguchi, as shown above, discloses the limitations of Claim 1.
Notaguchi further discloses that the second plant species or cultivar is zinnia, rosemary, marigold, fountain grass , spider flower, wisteria, verbena, bee balm, daffodil, lavender, wax begonia, lamb's ear, vinca, star jasmine, allium, foxglove, coleus, purple heart, coreopsis, cosmos, autumn fern, coneflower, flossflower, signet marigold, snapdragon, boxwood, cinquefoil, butterfly bush, spirea, juniper, russian sage, monkshood, peony, black cohosh, dusty miller, lamb's ear, Japanese pachysandra, Japanese painted fern, lady's mantle, lily of the valley, or Japanese sedge (Column 15 Lines 60-67 states that a grafted plant body 1 is provided comprising a first plant tissue as a scion and a second plant tissue as a rootstalk. Claim 1 states that each of the two different family tissues may belong to the Lavandula genus. This means that the second plant species or cultivar may be a lavender plant.).
Regarding Claim 8, the system of Notaguchi, as shown above, discloses the limitations of Claim 1.
Notaguchi further discloses that the first plant species or cultivar and/or the second plant species or cultivar are selected from lavender, dusty miller, Agastache, Hydrangea, Sage, rosemary, rose, butterfly bush, Angelonia, peppers, apple, or Dahlia (Column 15 Lines 60-67 states that a grafted plant body 1 is provided comprising a first plant tissue as a scion and a second plant tissue as a rootstalk. Claim 1 states that each of the two different family tissues may belong to the Lavandula genus. This means that the first plant species or cultivar and/or the second plant species may be a lavender plant.).
Regarding Claim 10, the system of Notaguchi, as shown above, discloses the limitations of Claim 1.
Notaguchi further discloses that the first plant species or cultivar and second plant species or cultivar are different species (Column 15 Lines 60-67 states that a grafted plant body 1 is provided comprising a first plant tissue as a scion and a second plant tissue as a rootstalk. Fig. 2 shows an example where the first plant species is a Solanaceae tomato plant tissue and the second plant species may be a Cucurbitaceae plant.).
Regarding Claim 13, Notaguchi discloses a method of forming a grafted plant body comprising joining tissue from a first plant species or cultivar with a second plant species or cultivar (Column 15 Lines 60-67 states that a grafted plant body 1 is provided comprising a first plant tissue as a scion and a second plant tissue as a rootstalk. Because grafting is the surgical joining of two or more plants [See Column 1 Lines 20-25], grafted plant body 1 is formed by joining the tissues of a first and a second plant species. Fig. 2 shows an example where a tomato plant tissue is used as a scion and a Cucurbitaceae family plant tissue is used as a rootstalk.), wherein the second plant species or cultivar comprises animal repellent properties (Fig. 2 shows that the second plant species is from the Cucurbitaceae family, which comprise cucurbitacins that serve as a natural defense mechanism against herbivores.) and the grafted plant body comprises a flower or fruit from the first plant species or cultivar (Fig. 2 shows that the scion can comprise a fruit from a tomato plant [See also Column 14 Lines 55-65].).
Regarding Claim 14, the method of Notaguchi, as shown above, discloses the limitations of Claim 13.
Notaguchi further discloses that the method further comprises the steps of:
Exposing the tissue of the first plant species or cultivar (stated in Column 20 Lines 25-45; The first plant tissue used as a scion is prepared by cutting the stem and cutting the cut end in a V shape, both of which expose the tissue of the first plant species.);
Exposing the tissue of the second plant species or cultivar (stated in Column 20 Lines 25-45; The second plant tissue used as a rootstalk is prepared by horizontally cutting a stem or petiole, which exposes the tissue of the second plant species.);
Contacting the exposed tissues from the first and second plant species or cultivars for a time period and under conditions sufficient to join the tissue (stated in Column 20 Lines 40-65; The first species used as a scion and the second species used as a rootstalk are placed in contact with one another and placed in certain conditions for four weeks until grafting is completed.).
Regarding Claim 15, the method of Notaguchi, as shown above, discloses the limitations of Claim 13.
Notaguchi further discloses that the method further comprises the steps of:
A) Exposing tissue of the first plant species or cultivar (stated in Column 20 Lines 25-45; The first plant tissue used as a scion is prepared by cutting the stem and cutting the cut end in a V shape, both of which expose the tissue of the first plant species.);
B) Exposing tissue of the second plant species or cultivar (stated in Column 20 Lines 25-45; The second plant tissue used as a rootstalk is prepared by horizontally cutting a stem or petiole, which exposes the tissue of the second plant species.);
C) Contacting the exposed tissues from the first plant species or cultivar to a graft medium (stated in Column 9 Lines 10-55; A graft medium is interposed between two tissues of two plants. Therefore, the exposed tissue of the first plant tissue used as a scion contacts to a graft medium.); and
D) Contacting the exposed tissues from the second plant species or cultivar to the graft medium (stated in Column 9 Lines 10-55; A graft medium is interposed between two tissues of two plants. Therefore, the exposed tissue of the second plant tissue used as a rootstalk contacts to a graft medium.);
Wherein steps c) and d) occur for a time period and under conditions sufficient to join the exposed tissues of the first plant species and the second plant species (stated in Column 9 Lines 10-55; When a graft medium is interposed between the first plant tissue and the second plant tissue, the two tissues are grown for seven days and under continuous light conditions to allow the tissues to graft.).
Regarding Claim 17, the method of Notaguchi, as shown above, discloses the limitations of Claim 13.
Notaguchi further teaches that the first plant species or cultivar is a scion (Fig. 2 shows an example where a first tomato plant tissue is used as a scion.).
Regarding Claim 18, the method of Notaguchi, as shown above, discloses the limitations of Claim 13.
Notaguchi further teaches that the second plant species or cultivar is rootstalk (Fig. 2 shows an example where a second Cucurbitaceae family plant tissue is used as a rootstalk).
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 3, 5, 16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Notaguchi (US 11129337 B2).
Regarding Claim 3, the system of Notaguchi, as shown above, teaches the limitations of Claim 1.
However, the system of Notaguchi fails to explicitly state that the rootstalk is directly grafted to the scion.
Notaguchi teaches a different embodiment wherein the rootstalk is directly grafted to the scion (stated in Column 9 Lines 10-30; The first plant tissue that may serve as a rootstalk and the second plant tissue that may serve as a scion are directly grafted to one another.). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the system of Notaguchi to have the rootstalk be directly grafted to the scion as taught by a different embodiment of Notaguchi with reasonable expectation of success to allow for faster maturity.
Regarding Claim 5, the system of Notaguchi, as shown above, teaches the limitations of Claim 1.
However, the system of Notaguchi fails to explicitly state that the scion comprises an animal resistant portion of a second plant species or cultivar.
Notaguchi teaches a different embodiment where the scion comprises an animal resistant portion of a second plant species or cultivar (Column 15 Lines 60-67 and Column 16 Lines 1-10 state that a grafted plant body comprises a first plant tissue as a rootstalk and a third plant tissue as a scion. Claim 1 states that each of the two different family tissues may belong to the Lavandula genus. This means that the scion of a third plant tissue would be a Lavandula plant which comprises an animal resistant portion [see ¶10 of Applicant’s Specification].). It would have been obvious to one having ordinary skill in the art before the claimed invention was effectively filed to have the scion comprise an animal resistant portion of a second plant species or cultivar as taught by a different embodiment of Notaguchi with reasonable expectation of success because lavender is a natural and non-toxic substance that still serves to repel animals, such as deer and rodents, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
Regarding Claim 16, the method of Notaguchi, as shown above, teaches the limitations of Claim 13.
However, the method of Notaguchi fails to explicitly state that the first plant species or cultivar is rootstalk.
Notaguchi teaches a different embodiment where the first plant species or cultivar is rootstalk (Column 15 Lines 60-67 and Column 16 Lines 1-10 state that a grafted plant body comprises a first plant tissue as a rootstalk.). It would have been obvious to one having ordinary skill in the art before the claimed invention was effectively filed to have the first plant species or cultivar be rootstalk as taught by a different embodiment of Notaguchi with reasonable expectation of success to provide the desired characteristics and animal repellent qualities, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
Regarding Claim 19, the method of Notaguchi, as shown above, teaches the limitations of Claim 13.
However, the method of Notaguchi fails to explicitly state that the second plant species or cultivar is a scion.
Notaguchi teaches a different embodiment where the second plant species or cultivar is a scion (Column 15 Lines 60-67 and Column 16 Lines 1-10 state that a grafted plant body comprises a first plant tissue as a rootstalk and a second plant tissue as a scion.). It would have been obvious to one having ordinary skill in the art before the claimed invention was effectively filed to have the second plant species or cultivar be a scion as taught by a different embodiment of Notaguchi with reasonable expectation of success to provide the desired characteristics and animal repellent qualities, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
Claims 9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Notaguchi (US 11129337 B2) in view of Dagan et al. (US 20180271025 A1).
Regarding Claim 9, the system of Notaguchi, as shown above, teaches the limitations of Claim 1.
However, the system of Notaguchi fails to explicitly state that the first plant species or cultivar and the second plant species or cultivar are the same species.
Dagan teaches in the same field of endeavor as applicant’s invention (¶1 states that the invention relates to grafted plants.), the system of Dagan teaches a grafted plant body comprises a first plant species or cultivar and a second plant species or cultivar, wherein the first plant species or cultivar and the second plant species or cultivar are the same species (Stated in ¶32; The invention provides a grafted plant consisting of a rootstalk and a scion of the Ocimum species.). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the system of Notaguchi to have the first plant species or cultivar and the second plant species or cultivar be the same species as taught by Dagan with reasonable expectation of success to produce a grafted body with desired agronomical, horticultural, and/or ornamental characteristics (Dagan, ¶44).
Regarding Claim 11, the system of Notaguchi, as shown above, teaches the limitations of Claim 1.
However, the system of Notaguchi fails to explicitly state that the first plant species or cultivar and second plant species or cultivar are different species from the same genus.
Dagan teaches in the same field of endeavor as applicant’s invention (¶1 states that the invention relates to grafted plants.), the system of Dagan teaches a grafted plant body comprises a first plant species or cultivar and a second plant species or cultivar, wherein the first plant species or cultivar and second plant species or cultivar are different species from the same genus (Stated in ¶32; The invention teaches a grafted plant consisting of a rootstalk of solanum melongena species and a scion of the solanum lycopersicum species, which are both different species of the solanum genus.). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the system of Notaguchi to have the first plant species or cultivar and second plant species or cultivar be different species from the same genus as taught by Dagan with reasonable expectation of success to produce a grafted body with desired agronomical, horticultural, and/or ornamental characteristics (Dagan, ¶44).
Regarding Claim 12, the system of Notaguchi, as shown above, teaches the limitations of Claim 1.
However, the system of Notaguchi fails to explicitly state that the first plant species or cultivar and second plant species or cultivar are different species from the same family.
Dagan teaches in the same field of endeavor as applicant’s invention (¶1 states that the invention relates to grafted plants.), the system of Dagan teaches a grafted plant body comprises a first plant species or cultivar and a second plant species or cultivar, wherein the first plant species or cultivar and second plant species or cultivar are different species from the same family (Stated in ¶32; The invention teaches a grafted plant consisting of a rootstalk of solanum melongena species and a scion of the solanum lycopersicum species, which are both different species of the Solanaceae family.). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the system of Notaguchi to have the first plant species or cultivar and second plant species or cultivar be different species from the same family as taught by Dagan with reasonable expectation of success to produce a grafted body with desired agronomical, horticultural, and/or ornamental characteristics (Dagan, ¶44).
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive.
Regarding Claim 1, on Pgs. 15-16, Applicant argues the following: “For a cited reference to anticipate, it "must clearly and unequivocally disclose the claimed [grafted plant body] or direct those skilled in the art... without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference." In re Arkley, 455 F.2d 586, 588 (CCPA 1972). Moreover, "[b]ecause the hallmark of anticipation is prior invention, the prior art reference––in order to anticipate under 35 U.S.C. § 102––must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim." See Net MoneyIN, Inc. v VeriSIgn, Inc., 545 F.3d 1359, 1369 (Fed Cir. 2009). Notaguchi's FIG. 2 makes clear that some picking must have been required by the Examiner: See FIG. 2. As can be seen, the "Third plant tissue" involve a "useful root system" selected from"(Fabaceae, Cucurbitaceae, etc.)." See FIG. 2. There is no limitation on the "useful root system" that may be used and, therefore, the Examiner must be picking and choosing from Notaguchi's alleged disclosure. Therefore, for at least this reason, the rejection is deficient.”
Examiner respectfully disagrees.
In re Arkley, 455 F.2d 586, 588 (CCPA 1972) stated that the prior art reference “must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” As shown in the rejection of claim 1 above, Fig. 2 of Notaguchi shows that the scion can comprise a vegetable from a tomato plant, and that the rootstalk can comprise the rootstalk of Cucurbitaceae family, which comprise cucurbitacins that serve as a natural defense mechanism against herbivores. In other words, Notaguchi discloses the claimed limitations without any need to pick, choose, and combine various disclosures because (1) Notaguchi unequivocally discloses the limitations in one of the possible embodiments of the invention and (2) the Examiner does not rely on any combination of references to teach the limitations.
In addition, on Pgs. 16-17, Applicant argues the following: “Moreover, Notaguchi's "useful root systems" are those that show disease resistance, drought resistance, salt tolerance, base resistance, or acid resistance, or having a useful rhizome part." See 14:34-38. Despite Notaguchi providing no teaching or suggestion of animal repellency, the Examiner alleges rootstalk of Cucrbitaceae family "comprise cucurbitacins that serve as a natural defense mechanism against herbivores." However, that all rootstalk of the Cucurbitaceae family have cucurbitacins is not a fact that is instantly and unquestionably demonstrable as being well-known. To the extent the Examiner is relying on Official Notice to allege that all rootstalk of the Cucurbitaceae family have cucurbitacins which serve as an animal repellent, Applicant respectfully request documentary evidence of the alleged fact, should the rejection be maintained. See MPEP § 2144.03. Contrary to the Examiner's allegations, Notaguchi's "useful root systems" are useful for properties other than animal repellency. Moreover, as shown in Haber, A, et al. Journal of Integrated Pest Management 12.1 (2021): 1-10, cucurbitacin content can vary in plants from the Cucurbitaceae family and "larvae feed on the roots of cucurbit plants, which can impede root development" suggesting that cucurbitaceans, even if present in roots (which Applicant does not concede), may not be in amounts sufficient to confer animal repellency. Particularly considering that Notaguchi does not discuss animal repellency at all, there is no basis, whatsoever, to have selected animal repellent portions of plants from Notaguchi's disclosure as claimed and the rejection is deficient.”
Examiner respectfully disagrees.
As noted above, Fig. 2 of Notaguchi shows an example where a tomato plant tissue is used as a scion and a Cucurbitaceae family plant tissue is used as a rootstalk. The Cucurbitaceae family comprises cucurbitacins (Sources: Aeri, Vidhu, et al. “Cucurbitacins - an insight into medicinal leads from nature.” Pharmacognosy Reviews, vol. 9, no. 17, 2015, p. 12, https://doi.org/10.4103/0973-7847.156314; Bruno, P., Arce, C.C.M., Machado, R.A.R. et al. Sequestration of cucurbitacins from cucumber plants by Diabrotica balteata larvae provides little protection against biological control agents. J Pest Sci 96, 1061–1075 (2023). https://doi.org/10.1007/s10340-022-01568-3). Cucurbitacins serve as a natural defense mechanism against herbivores (Source: Bruno, P., Arce, C.C.M., Machado, R.A.R. et al. Sequestration of cucurbitacins from cucumber plants by Diabrotica balteata larvae provides little protection against biological control agents. J Pest Sci 96, 1061–1075 (2023). https://doi.org/10.1007/s10340-022-01568-3).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELICA A ALMEIDA BONNIN whose telephone number is (571)272-0708. The examiner can normally be reached M-F 8:30 AM - 5:00 PM.
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, Peter Poon can be reached at (571) 272-6891. 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.
/A.A.A./Examiner, Art Unit 3643
/DAVID J PARSLEY/Primary Examiner, Art Unit 3643