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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/24/2025 was considered by the examiner.
Claim Rejections - 35 USC § 101/112 (‘use’ claims)
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.
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.
Claims 1-10 and 13-19 provides for the use of porphin salt as a plant growth regulator or plant immunity inducer, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass.
A claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See MPEP 2173.05(q)
Furthermore, a claim is indefinite where it merely recites a use without any active, positive steps delimiting how the claimed use is actually practiced.
Instant claims 1-10 and 13-19 recites both a product (porphin salt) and a process (use of a porphin salt. Claims 1-10 and 13-19 are thus rejected (along with its dependent claims) as the claims are directed to neither a “process” nor a “product” exclusively. Note: For the purposes of examination, the claims will be treated as “product” claims.
Thus, in all:
1) Claims 1-10 and 13-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter; and
2) Claims 1-10 and 13-19 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which
applicant regards as the invention.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7 and 19 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7, dependent from claim 1, recites, “…wherein the porphin salt is one of or a combination of two or more of…”. However, claim 1 claims “[A] use of a porphin salt… wherein the porphin salt comprises a salt of a porphin or a salt of a chlorin compound.”. The recitation of “a porphin salt…” suggests a singular porphin salt is used rather than a combination such as that of instant claim 7. As such, claim 7 fails to further limit the subject matter of the claim from which it depends as it extends beyond the scope of its dependent claim.
Similar analysis is applied to instant claim 19 which is dependent from claim 18.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-10 and 13-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ng et al. (WO 2021/163782; of record).
Ng describes a composition/method for treating plants, comprising a composition that includes a photosensitizer that generates reactive oxygen species in the presence of light and oxygen, the photosensitizer being selected from the group consisting of a porphyrin (e.g. protoporphyrin salt; see [025]), a reduced porphyrin (e.g. chlorin compound, chlorophyllin; see [067, 068]) and combinations thereof (see abstract and claim 1; see instant claim 1). The protoporphyrin and the chlorin compound/chlorophyllin are to be in the form of an agriculturally acceptable salt which encompasses cations derived from alkali and alkaline earth metals and ammonium, e.g. Na+, K+, Mg+2, etc (see [093]) which are monovalent and divalent cations (see instant claims 2-7).
Instant claims 4 and 8-10 are product-by-process limitations as these claims recite how the used composition is prepared rather than provide any structural limitation to the claims. See MPEP 2113(I) which states that where the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
Instant claims 13-17 are either intended use limitations to the use claims as these claims provide how the composition used is (e.g. “be applied…”, “is applied…”) or outcomes associated with the intended use (e.g. ‘wherein effects of the plant growth regulator…”). Intended use limitations provide a means by which the composition may be used without limiting the structure of the composition itself. See MPEP 2111.02. It’s noted, however, that Ng’s composition may be applied to plants via irrigating, spraying, sprinkling, pouring, etc. (see [052]; see instant claim 13). Regarding the outcomes noted above, artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art. However, the discovery of a previously unappreciated property of a prior art composition does not render the old composition patentably new to the discoverer. See MPEP 2112.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A PURDY whose telephone number is (571)270-3504. The examiner can normally be reached from 9AM to 5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bethany Barham, can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A PURDY/Primary Examiner, Art Unit 1611
Prosecution Insights