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 .
Status of Application
Receipt of the Preliminary Amendment filed on January 17, 2025, is acknowledged.
Claims 1-16 are pending in this application.
Claims 7, 9, and 11-12 have been amended.
Claims 13-16 are new.
All pending claims are under examination in this application.
Information Disclosure Statement
Receipt of the Information Disclosure Statements filed on February 26, 2025; March 5, 2025; and June 22, 2026, is acknowledged. Signed copies are attached to this office action.
Claim Interpretation
The instant claims 1-6 recite “A brown rice quality improving agent comprising zerumbone as an active agent.” The claims are drawn to a composition of matter. Applicant’s attention is directed to MPEP 2111.02 II which states If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020).
Instant claims 7-16 recite “A method for improving quality of brown rice comprising applying zerumbone to rice plants in the cultivation period.” Applicant’s attention is directed to MPEP 2111.02 I which discloses any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation. See, e.g., Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989).
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 2-6, 8, 13-16 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.
Regarding claims 2-3, and 8 recite a squeeze, however, the term is not defined in the specification. Additionally, the term is not recognized. It is unclear what a squeeze is and how it related to the instant claims.
Additionally regarding claims 2-3, the claims recite “or which contains at least one of them.” However, it is unclear what “at least one of them is intended to claim. Clarification is requested.
Those claims not specifically recited, as included in this rejection since they do not remedy the indefiniteness.
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 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Talwar et al. (A dramatic role of terpenoids in increasing rice production, Experiential 39 (1983) pp 117-119; cited on IDS dated 2-26-2025).
Talwar discloses seeds of the PR-106 variety of rice or the seedlings of 35-day old nursery plants thereof, were treated with zerumbone-containing aqueous solution and then grown in the field. The measurement results of the yields of rice revealed that the yields obtained with the treated seeds and seedlings were 12.50% and 14.17% greater, respectively, compared with controls that had not been treated with zerumbone (p. 118, tables, p. 118, right column, line 38 to P. 119, line 10).
Zerumbone has been reported as a new group of plant growth regulators. The major biological effect observed with these compounds was prolific rooting in stem cuttings of Phaseolus aureus and some other plant species. An increase in the root formation (both number and length) is likely to affect the physiology and morphology of the plant which in turn could affect the total yield (page 118, right column).
Regarding claims 2-5 and 8, Zerumbone is isolated from the rhizomes of Zingiber zerumbet (page 118, right column). The Examiner has interpreted this isolation to be an extract or ground product. It is noted that Zingiber zerumbet is wild ginger. The seeds and roots of the plants were dipped into a 25 ppm solution of the zerumbone. The solutions were prepared by dissolving the weighed quantity of the compounds in a small amount of alcohol and making the desired volume with warm water.
Regarding claim 6, Talwar discloses the compound was dissolved in alcohol and making the desired volume with warm water. It can be interpreted that the compounds are in dry solid form, therefore, it would have been obvious to one of ordinary skill to select the form of the compound for easy dissolution into a solution. The skilled artisan would immediately recognize that a dust, powder, or granule would have different particle size and thus different dissolution profiles.
Regarding claim 7, after a review of the specification, paragraph 0017 describes the effect to improve the quality of brown rice of the present invention is confirmed then the proportion of head grain increases e.g. by reduction of the proportion of grain chalkiness, by application of the present invention, as compared with a case where the present invention is not applied, however, the only active method step recited in the instant claims is application of zerumbone to rice plants. Since Talwar discloses said application to rice plants, the claimed “improved quality” would be a necessary result of the application.
Regarding claims 9 and 13, as noted above, the seedlings were treated.
Regarding claims 10 and 14, the greening stage is the vegetative growth stage in plant cultivation, therefore, the root treated seedling is considered part of the greening stage.
Regarding claims 11 and 15, as noted above, the seedlings were treated. Talwar additionally discloses the root treated nursery plants were planted in 3 and 4 replications, respectively in the field (page 119, left column).
Regarding claims 12 and 16, as noted above, the seeds were treated prior to planting.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to have prepared and utilized the zerumbone recited in the instant claims since as noted in the Internation Search Report submitted on January 17, 2025, Talwar does not explicitly indicate that the zerumbone was used for the purpose of "improving the quality of brown rice." According to the instant specification (such as paragraphs 0019-0034), the "agent for improving the quality of brown rice" in claim 1 and the "method for improving the quality of brown rice" in claim 7 are understood to encompass agents consisting of any dosage form containing zerumbone that are used by any means at any period of time (seeds; seedling stage prior to transplant in paddies; or post-transplant stage) for any variety of rice, or a method of using said agent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA S MERCIER whose telephone number is (571)272-9039. The examiner can normally be reached M-F 6:30 am to 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A Wax can be reached at 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA S MERCIER/Primary Examiner, Art Unit 1615
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