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 .
Copending Applications
Applicants must bring to the attention of the Examiner, or other Office official involved with the examination of a particular application, information within their knowledge as to other copending United States applications, which are "material to patentability" of the application in question. MPEP 2001.06(b). See Dayco Products Inc. v. Total Containment Inc., 66 USPQ2d 1801 (CA FC 2003).
Claims 1-41, pending in this application, are examined.
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.
Claims 20-21, 23-24 and 26-27 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.
The claims are indefinite in the recitation of “at least about” 1 mM, 10 mM, 20 mM, and 50 mM because the metes and bounds of “about” with the “at least” is not defined in the specification. Applicant is referred to the MPEP 2173.05(b), which states:
“[T]he court held that claims reciting “at least about” were invalid for indefiniteness where there was close prior art and there was nothing in the specification, prosecution history, or the prior art to provide any indication as to what range of specific activity is covered by the term “about.” Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991).”
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.
Claims 1-9, 11-19, 22-23, 25, 28-38, and 40-41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seki et al (US 2012/0227135 or US PAT 9, 258, 954 B2).
The claims are drawn to a method of enhancing a physiological performance or environmental stress resistance of a plant or seed, said method comprising: exposing the plant or seed to a composition, wherein the composition comprises ethanol and/or acetic acid, wherein the exposing enhances the physiological performance of the
plant or seed relative to an untreated plant or seed, wherein the enhanced physiological performance includes reduced water consumption, enhanced photosynthetic performance, an increase in number of photosynthetic pigments, enhanced antioxidant defense, enhanced antioxidant accumulation, enhanced flowering, enhanced seed maturity, enhanced growth, an increase in soluble proteins, an increase in starch, increased seed yield, a reduction in water loss, reduced electrolyte leakage, a reduction in reactive oxygen species (ROS) accumulation, lower malondialdehyde accumulation, enhanced root growth, enhanced shoot growth, reduced leaf temperatures, and combinations thereof; wherein the performance is inheritable in the plant or seed, and wherein the offspring plants or seeds from the treated plant or seed demonstrate substantially the same enhanced physiological performance as the treated plant or
seed; said exposing enhances the resistance of the plant or seed to one or more environmental stresses including drought, heat, freezing temperatures, microbial contamination, biotic or abiotic stress, plant pathogens relative to an untreated plant or seed; said method wherein the plant includes maize, rice, bean, soybean, common bean, pinto bean, corn, cotton, wheat, N. benthamiana, Arabidopsis, tobacco, tomato, lettuce, potato, grapes, or sorghum; wherein the concentration of the acetic acid is about 1 mM. The claims are also drawn to modified plant or seed having inheritable enhanced physiological performance and/or enhanced environmental stress resistance; said modified plant or seed is formed by exposing the plant or seed to a composition comprising ethanol and/or acetic acid; said enhanced physiological performance is reduced water consumption, enhanced photosynthetic performance, an increase in number of photosynthetic pigments, enhanced antioxidant defense, enhanced antioxidant accumulation, enhanced flowering, enhanced seed maturity, enhanced growth, an increase in soluble proteins, an increase in starch, increased seed yield, a reduction in water loss, reduced electrolyte leakage, a reduction in reactive oxygen species (ROS) accumulation, lower malondialdehyde accumulation, enhanced root growth, enhanced shoot growth, and/or reduced leaf temperatures, and combinations thereof; wherein the modified plant or seed is maize, rice, bean, soybean, common bean, pinto bean, cotton, wheat, N. benthamiana, Arabidopsis, tobacco, tomato, lettuce, potato, grapes, or sorghum; wherein the one or more environmental stresses are drought, heat, freezing temperatures, microbial contamination, biotic stress, abiotic stress, and/or plant pathogenesis.
Seki et al teach a method of producing a plant with enhanced environmental stress tolerance including drought, salt stress, or freezing stress tolerance by applying to the plant a pure acetic acid or an agrochemical composition comprising an acetic acid ([0039-0040]; [0138-0140]; Examples 1-3). At [0144], Seki et al teach that the agricultural composition comprises acetic acid and ethanol. Fig. 19 shows the results of a drought-stress resistance test after acetic acid was applied to a plant grown in a pot. At [0209], Seki et al also teach a plant treated with 10mM of acetic acid exhibited strong drought stress resistance compared to a plant without the treatment and a plant treated by application of 0.5 mM acetic acid (Fig. 19); said plant is a maize, rice, soybean, barley, Arabidopsis, grapes, bean, wheat or tomato ([0091]) and a progeny of any generation thereof that retains the stress tolerance/resistance of the parent plant/seed ([0128]). The enhanced physiological performance such as a reduced water consumption, increased seed yield, reduction in water loss, and enhanced growth would be inherent property of the acetic acid and ethanol treated plant/seed, and as result of the drought, salt and/or freezing tolerance property.
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.
Claims 1-41 are rejected under 35 U.S.C. 103 as being unpatentable over Seki et al (US 2012/0227135 A1 Applicant’s IDS) in view of Allen and Allen (Frontiers in Plant Science (2020), 11(647) and Ahmad et al (Sustainability (2016 (2016)8, 1330).
Seki et al teach a method of producing a plant with enhanced environmental stress tolerance including drought, salt stress, or freezing stress tolerance by applying to the plant a pure acetic acid or an agrochemical composition comprising an acetic acid and ethanol; and a plant treated with the acetic acid or a composition comprising the acetic acid and ethanol as discussed above. At paragraph [0063], Seki et al suggest that “by enhancing resistance to environmental stress of a plant….., it is possible to produce a plant that can grow even in such an external environment that growth of a normal is adversely affected. At paragraph[0146], Seki et al suggest the concentration of acetic acid in the agrochemical composition may vary within a wide range. The enhanced physiological performance such as a reduced water consumption, increased seed yield, reduction in water loss, and enhanced growth flow from increased drought, salt, and freezing tolerance/resistance.
While Seki et al state that “the application amount of acetic acid can be appropriately set based on conditions such as species of a target plant and growth stage thereof, season of application and soil environment of agricultural field to be subjected to application”, Seki et al do not explicitly teach and ethanol concentrations of at least about 20 mM-25 mM of acetic acid or 10 mM-50 mM ethanol of claims 20-21, 24 and 26-27, and the sorghum plant species of claims 10 and 39.
Allen and Allen teach that low dose (<50mM) of acetic acid proposed as a biostimulant under drought stress for major and diverse crops such as maize, cassava, barley and mung bean. Allen and Allen show maize seedling treated with 30 mM of acetic acid significantly increased maize production, while a significant increase of leaf area, total leaf chlorophyl content, water use efficiency, reduction in leaf transpiration rate were observed after foliar application of 20 mM of acetic acid to 16-day seedling of mung beans; when this foliar acetic acid was combined with saline growth, significant increase in root biomass was also observed (see the whole document).
Ahmad et al teach exogenous application of a composition comprising growth stimulant on sorghum; the importance of sorghum as food and fodder; and the limited work reported on improvement of sorghum forage and grain yield through application of growth stimulant on sorghum.
Therefore, it would have been obvious to one of skill in the art , before the effective filing date of the claimed invention, to use the method of applying acetic acid and ethanol or a composition comprising said acetic acid and ethanol on a plant or seed to enhance tolerance/resistance to biotic or abiotic stresses including drought, salt, freezing , or pathogenesis stresses and produce modified plants including Arabidopsis maize or soybean having enhanced stress tolerance as taught by Seki et al, and to modify that method by including acetic acid dose less than 50 mM, given that low dose (<50mM) of acetic acid resulted in improved growth in major and diverse crops such as maize, cassava, barley and mung bean as taught by Allen and Allen, with a reasonable expectation of success as taught by each of Seki et al and Allen and Allen . One would have been motivated to further modify the method taught by Seki et al in view of Allen and Allen, to include sorghum plant or seed; given the importance of sorghum as food and fodder; and given the limited work done on application of growth stimulant on sorghum for enhanced sorghum forage and grain yield production. With regard to the concentration of acetic acid and ethanol of 20 mM, 25 mM and 50 mM, the MPEP 2144.05 states the following:
“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.” /n re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%)".
Therefore, for all the reasons discussed above, the claimed invention as a whole was a prima facie obvious.
Conclusion
No claim is allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDINA AHMED IBRAHIM whose telephone number is (571)272-0797. The examiner can normally be reached Monday-Friday, 9:00 - 6:00.
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MEDINA AHMED. IBRAHIM
Primary Examiner
Art Unit 1662
/MEDINA A IBRAHIM/Primary Examiner, Art Unit 1662
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