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 Status
Claims 1-20 are currently pending and under examination.
Priority
Examiner acknowledges Applicant’s claim to the following priority:
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Information Disclosure Statement (IDS)
Applicant has not filed an IDS with this application.
Applicant is reminded of their duty to disclose to the Office all information known to the person to be material to patentability as defined in 37 CFR 1.56. As stated therein, “[e]ach individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.”
Claim Objections
Claims 5 and 15-19 are objected to for the following reasons:
Claim 5 is objected to for what is presumed to be a typographical error. Claim 5 recites, “…and salt compounds thereof .” There is an additional space between the last word of the claim and the period. Appropriate correction is required.
Claims 15-19 are objected to for what is presumed to be a typographical error. These claims recite “…wherein the seed to be germinated is…rape seed…” It is assumed applicant meant rapeseed (Brassica napus). Appropriate correction is required.
Claim Rejections
Claim Rejections - 35 USC § 101
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.
Claims 1-4 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims are drawn to use of phosphoenolpyruvate or salt compound thereof and not a composition of matter, machine, manufacture, or process.
“Use” claims that do not purport to claim a process, machine, manufacture, or
composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)(“one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101”). In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: “The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.” In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: “The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.”
Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim.
Claim Rejections - 35 USC § 112(b)
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 1-4, 6-7, 11-14, and 19 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.
Claims 1-4 are rejected under 35 USC 112(b) as indefinite because claim 1 merely recites the “use” of phosphoenolpyruvate or a salt thereof for improving seed vigor without reciting any active, positive steps delimiting how the claimed use is actually practiced. Accordingly, it is unclear what process applicant intends to encompass. See MPEP 2173.05(q).
Claims 6-7, 11-14, and 19 are rejected under 35 USC 112(b) for the following reasons:
Claim 6 recites the limitation “the contact treatment mode” in claim 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation “the contact treatment mode” in claim 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation “the pretreated seeds” in claim 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation “the operation of the pregermination treatment comprises…” in claim 11. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation “the conditions of the dark culture” in claim 12. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation “the conditions of the light culture” in claim 12. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 is included in this rejection for its dependency on, requiring every limitation of, and failing to cure the defect in rejected claim 11.
Please see the following USPTO guidance for antecedent basis in claims, particularly use of ‘a’ or ‘an’ versus ‘the’ or ‘said’ when first introducing claim limitations: https://www.uspto.gov/sites/default/files/documents/Claim%20drafting.pdf (particularly pp. 14-15).
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 1-6, 8-11, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Vakeswaran (“Standardization of soaking duration and optimum chemicals for seed priming in tomato,” published: 30 June 2022), and in further view of Kubis (“The import of phosphoenolpyruvate by plastids from developing embryos of oilseed rape, Brassica napus (L.), and its potential as a substrate for fatty acid synthesis,” published: 18 June 2004) and Lv (“Quantitative proteomic analysis of wheat seeds during artificial ageing and priming using the isobaric tandem mass tag labeling,” published: 15 September 2016).
Vakeswaran teaches a method for improving the quality, germination, and vigor of tomato seeds through seed priming (abstract). Vakeswaran specifically teaches a method of soaking tomato seeds for approximately 25 hours in aqueous solution containing chemical priming agents and subsequently evaluating germination and seedling vigor (abstract). Vakeswaran evaluates aqueous solutions of succinic acid at concentrations of 100, 200, 300, 400, and 500 ppm and reports treatment with 300 ppm succinic acid improves germination by approximately 18% relative to unprimed seeds (pp. 11412-11413). Thus, Vakeswaran expressly teaches contacting intact seeds with an aqueous solution containing a metabolically active organic acid for the purpose of improving germination and vigor.
Vakeswaran further teaches the concentration of the chemical priming agent is varied and optimized to obtain improved germination and vigor by testing several concentrations of each treatment agent.
Vakeswaran does not expressly teach employing phosphoenolpyruvate (“PEP”) or a salt thereof as the chemical priming agent, but this limitation is made obvious by Kubis and Lv.
Kubis teaches PEP is a metabolically useful substrate in seed embryo tissue (abstract). Specifically, Kubis teaches the plastidial PEP/phosphate translocator is expressed in developing embryos of oilseed rape demonstrating that PEP can be imported into plastids isolated from such embryos and metabolically utilized for fatty acid synthesis (p. 1455). Kubis further teaches the imported PEP provides carbon for metabolism and is utilized at rates sufficient to substantially contribute to fatty acid synthesis in the developing embryo (p. 1456).
Kubis additionally provides direct evidence that PEP can be transported into, and metabolically used by, seed embryo plastids rather than existing as an intracellular metabolite (p. 1457). The experiments of Kubis were performed with plastids isolated from developing embryos incubated with a PEP-containing solution and showed PEP uptake at a rate of 0.4 mM (p. 1458).
Thus, Kubis establishes that PEP is not merely an intracellular immediate, but is a transportable and useful substrate in seed embryo tissue.
Lv artificially aged wheat seeds to different germination levels and compared aged seeds with hydro-primed seeds (abstract). Lv found that aging was associated with deterioration of metabolism and energy-supply pathways, whereas priming caused the embryo to shift from a quiescent state into a highly metabolic state (p. 20). In primed seeds, Lv describes the proteins involved in glycolysis, the pentose-phosphate pathway, the TCA cycle, oxidative phosphorylation, and other energy-producing pathways were increased (pp. 20-22). Lv specifically teaches that pyruvate kinase catalyzes conversion of phosphoenolpyruvate to pyruvate with concomitant generation of ATP (p. 20). Lv further connects activation of these metabolic pathways with seed germination vigor and teach that seed priming accelerates germination and improves seedling uniformity (p. 20). Accordingly, Lv establishes that PEP participates directly in energy-producing metabolism activated during seed priming and germination.
Regarding claim 1 –
Vakeswaran teaches the use of an active chemical substance for improving seed germination and vigor as discussed above. Specifically, Vakeswaran teaches soaking tomato seeds in aqueous solutions containing chemical priming substances, including succinic acid, and reports improved germination and seedling vigor relative to untreated seeds (p. 11412).
While Vakeswaran does not expressly teach the active substance is PEP or a salt thereof, this limitation is made obvious over Kubis and Lv.
Kubis teaches that PEP is transported and metabolically utilized by seed embryo tissue and Lv teaches that PEP is a substrate in the ATP-generating glycolytic metabolism activated during seed priming and germination.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute PEP for the metabolic priming substance of Vakeswaran for the reasons discussed above. One of ordinary skill would have a reasonable expectation that seed exposure during imbibition would support the activated carbon and energy metabolism associated with germination and seed vigor.
Accordingly, the combined references render obvious the use of PEP for improving seed vigor as recited in claim 1.
Regarding claim 2 –
The combined teachings render obvious the use of PEP as discussed with respect to claim 1. Because PEP is expressly recited as an alternative in claim 2, the obvious use of PEP established by the combination of Vakeswaran, Kubis, and Lv satisfies the limitations of claim 2.
Regarding claims 3 and 4 –
Vakeswaran teaches the seed treatment method using aqueous solutions and expressly teaches varying the concentration of the chemical priming substance to determine an optimum concentration for germination and vigor. For succinic acid, Vakeswaran evaluates 100, 200, 300, 400, and 500 ppm and identifies 300 ppm as providing improved germination.
Kubis further teaches that physiologically relevant PEP concentration in developing seed embryo tissue is at least 0.4 mM. The claimed range encompasses 0.4 mM. See MPEP 2144.05.
Upon selecting PEP as the metabolic priming substance, it would have been obvious to one of ordinary skill to determine an effective concentration by routine experimentation, particularly in view of Vakeswaran’s express teaching to evaluate multiple concentrations of priming agent to determine the appropriate concentration that would produce the desired germination response. A skilled artisan would have reason to investigate PEP concentrations encompassing 0.4 mM because Kubis teaches this concentration is compatible with and present in metabolically active seed embryo tissue.
Regarding claim 5 –
Vakeswaran expressly teaches a method involving: 1) contacting seeds to be germinated with an active chemical substance; 2) soaking the seeds in a solution containing the active chemical substance; and 3) determining germination and seedling vigor post-priming.
While Vakeswaran does not expressly teach the active substance is PEP or a salt thereof, this limitation is made obvious over Kubis and Lv for the reasons set forth above.
Thus, the combination of Vakeswaran, Kubis, and Lv teaches seeds to be germinated, contact treatment of the seeds with an active substance, and selection of PEP as that active substance. Accordingly, claim 5 would have been obvious over the combination of these references.
Regarding claim 6 –
Vakeswaran expressly teaches the contact treatment is seed soaking. Vakeswaran determines that approximately 25 hours is an appropriate soaking duration for tomato seed priming and performs the chemical priming treatments by soaking the seeds for that duration. Accordingly, the use of seed soaking to carry out the PEP contact treatment would have been expressly suggested by Vakeswaran.
Regarding claim 8 –
The combined teachings render obvious the use of PEP as discussed with respect to claims 1 and 5. Because PEP is expressly recited as an alternative in claim 8, the obvious use of PEP established by the combination of Vakeswaran, Kubis, and Lv satisfies the limitations of claim 8.
Regarding claims 9 and 10 –
Vakeswaran teaches aqueous seed priming and expressly optimizes the concentration of active substance within the priming solution according to the resulting seed germination/vigor response. Kubis teaches a physiologically relevant PEP concentration of 0.4 mM in seed embryo tissue.
For the reasons set forth above regarding claims 3 and 4, it would have been obvious when substituting PEP into the aqueous seed-priming method of Vakeswaran to investigate and optimize its concentration, including concentrations encompassing 0.4 mM as taught by Kubis.
Regarding claim 11 –
Vakeswaran teaches seed priming as a pretreatment intended to improve subsequent germination and vigor. The treatment method of Vakeswaran comprises soaking the seeds with the active substance priming composition and thereafter evaluating germination.
Lv likewise teaches that seed priming initiates pregerminative metabolism, trasitions embryonic cells into a metabolically active state, and accelerates subsequent germination.
Therefore, it would have been obvious following PEP contact treatment to carry out a subsequent germination accelerating (or pregermination) treatment because the very purpose of the priming operation described by Lv is to activate pregerminative metabolism and enhance subsequent germination.
Accordingly, claim 11 would have been obvious over the combination of Vakeswaran, Kubis, and Lv.
Regarding claim 15 –
Vakewaran expressly teaches treatment of tomato seeds. Accordingly, the species limitation of claim 15 is taught directly by Vakeswaran and would have been obvious for the reasons set forth above regarding claim 5.
Regarding claim 16 –
Vakewaran expressly teaches treatment of tomato seeds. Accordingly, the species limitation of claim 16 is taught directly by Vakeswaran and would have been obvious for the reasons set forth above regarding claim 8.
Regarding claim 17 –
Vakewaran expressly teaches treatment of tomato seeds. Accordingly, the species limitation of claim 17 is taught directly by Vakeswaran and would have been obvious for the reasons set forth above regarding claim 9.
Regarding claim 18 –
Vakewaran expressly teaches treatment of tomato seeds. Accordingly, the species limitation of claim 18 is taught directly by Vakeswaran and would have been obvious for the reasons set forth above regarding claim 10.
Regarding claim 19 –
Vakewaran expressly teaches treatment of tomato seeds. Accordingly, the species limitation of claim 19 is taught directly by Vakeswaran and would have been obvious for the reasons set forth above regarding claim 11.
Regarding claim 20 –
Vakewaran expressly teaches treatment of tomato seeds. Accordingly, the species limitation of claim 20 is taught directly by Vakeswaran and would have been obvious for the reasons set forth above regarding claim 15.
Therefore, the limitations of claims 1-6, 8-11, and 15-20 would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, because:
One of ordinary skill, faced with the known objective of improving seed germination and vigor through seed priming, would employ the method taught by Varkeswaran;
Would employ PEP as an alternative metabolic priming substance because Kubis demonstrates that PEP is transported and utilized by seed embryo tissue; and
Would employ PEP as an alternative metabolic priming substance because Lv teaches that PEP participates in the ATP generating central carbon metabolism activated during seed priming and germination.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Vakeswaran, Kubis, and Lv (cited above) as applied to claims 1-6, 8-11, and 15-20 above, and further in view of Scheerder (US PGPub. No. 2015/0299057 A1, published: 22 October 2015).
Regarding claim 7 –
Vakeswaran in view of Kubis and Lv renders obvious contacting a seed with PEP to improve seed vigor, but Vakeswaran principally exemplifies soaking rather than seed dressing. However, this limitation is made obvious by Scheerder.
Scheerder teaches that seed treatment compositions may be applied directly to seeds by coating, including completely or partially coating the seed, in an effort to increase the effectiveness of the treatments ([0004]). Scheerder further teaches the seed treatment compositions can be used to improve seed germination and/or seedling development ([0025]). Finally, Scheerder teaches application by spraying, dipping, or brushing a treatment composition onto a seed ([0021]).
The seed treatment art also expressly recognizes seed dressing as a conventional mode of bringing an active ingredient into contact with a seed by applying a thin layer of active product on the surface of a seed.
It would have been obvious to employ seed dressing/coating instead of soaking as the mode for contacting the seed with PEP because both were known alternative methods for applying an active seed treatment substance directly to the seed. Selection of seed dressing treatment would predictably retain the active substance at the seed surface while allowing subsequent exposure of the seed to the active material upon hydration.
Accordingly, claim 7 would have been obvious over Vakeswaran, Kubis, and Lv in further view of Scheerder.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Vakeswaran, Kubis, and Lv (cited above) as applied to claims 1-6, 8-11, and 15-20 above, and further in view of Huazhong (CN104541663 A, published: 29 April 2015 – Machine Translation relied upon).
Regarding claim 12 –
Vakeswaran in view of Kubis and Lv renders obvious the treatment of seeds followed by germination, but does not expressly disclose the claimed steps of incubation. However, this limitation is made obvious in further view of Huazhong.
Huazhong teaches a seed treatment and germination method in which rice seeds are soaked in a priming agent and placed in a dark incubator at 25°C, followed by germination under controlled illumination and dark conditions in an artificial climate/incubation chamber (p. 1).
Thus, controlled dark and light culture incubation was known in the same field of seed priming and germination.
Therefore, it would have been obvious to conduct the post-PEP pregermination treatment under the controlled dark and light culture conditions taught by Huazhong because temperature and photoperiod are conventional, replicable environmental parameters used to germinate primed seeds.
Regarding claim 13 –
Huazhong teaches placing primed seeds in a dark incubator at approximately 25°C (p. 1). Huazhong additionally teaches subsequent controlled germination at 25°C under dark conditions.
The claimed dark culture temperature range encompasses the 25°C condition expressly taught by Huazhong. See MPEP 2144.05.
Huazhong further teaches 12-hour treatment intervals and controlled photoperiods, demonstrating that 12-hour culture periods were conventionally employed in the seed treatment protocol (p. 1). Twelve hours lies withing the claimed 6–18-hour range. See MPEP 2144.05.
Huazhong additionally teaches the controlled chamber with a relative humidity of 60%, which lies within the claimed 40-70% relative humidity range (p. 1).
Regarding claim 14 –
Huazhong expressly teaches germination of primed rice seeds in an artificial climate chamber under: 12 hours of illumination at 12,000 lux; 60% relative humidity; and 30°C during light conditions. Each of these parameters disclosed by Huazhong falls within the corresponding limitation range of claim 14.
Accordingly, Huazhong expressly teaches conditions falling within each of the claimed parameters recited in claims 12-14. It would have been obvious to one of ordinary skill, before the effective filing date of the claimed invention, to have employed these known germination chamber conditions following the PEP priming treatment taught by the combination of Vakeswaran, Kubis, and Lv. One of ordinary skill would have reason to do so because these germination chamber conditions were already known in the art to support controlled germination of primed seeds, as taught by Huazhong, and would have predictably provided the environmental conditions necessary for evaluating and obtaining the desired germination response.
Conclusion
Claims 1-20 are rejected. Claims 5 and 15-19 are objected to. No claim is allowed.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Julia A. Rossi whose telephone number is (571)272-0138. The examiner can normally be reached M-Th 7:30-5:30 (MST).
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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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/JULIA A. ROSSI/Examiner, Art Unit 1615 /Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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