DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after February 18, 2025, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt is acknowledged of Applicants claimed invention filed on 02/18/2025 in the matter of Application N° 19/056,278. Said documents are entered on the record. The Examiner further acknowledges the following:
Thus, claims 1-18 represent all claims currently under consideration.
Claim Rejections - 35 USC § 112 (d)
Claims 4 and 10 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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. 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.
With respect to claim 4, the claim recites an action or result attributable to the composition but does not further limit the makeup or components of the composition recited in the claim from which claim 4 depends. In other words, the additional language merely states what the composition does or is intended to accomplish without imposing a further limitation on the composition itself. Claim 4 fails to further limit the subject matter of the claim from which it depends.
With respect to claim 10, the additional language similarly recites an action or result but does not further limit the steps of the method recited in the claim from which claim 10 depends. Thus, the recited language does not add a further limitation to the claimed method and claim 10 is therefore of improper dependent form.
Applicant may cancel the claims, amend the claims to place them in proper dependent form, rewrite the claims in independent form, or provide a sufficient showing that the claims comply with the requirements of 35 U.S.C. 112 (d).
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 5-10 are rejected under 35 U.S.C. 112 (b) as being indefinite for failing to particularly point out and distinctly claim the subject matter that Applicant regards as the invention.
Claim 5 recites the transitional phrase “consisting essentially of.” This transitional phrase limits the scope of a claim to the expressly recited materials or steps that do not materially affect the basic and novel characteristics of the claimed invention. However, the claims and specification do not clearly identify the basic and novel characteristics of the claimed composition or otherwise provide an objective basis for determining which additional components would materially affect those characteristics. Consequently, the metes and bounds of claim 5 cannot be determined with reasonable certainty.
Claims 6-10 depend, directly or indirectly, from claim 5 and fail to cure the aforementioned deficiency. Claims 6-10 are indefinite for the same reason.
For purposes of examination, including searching for and applying prior art under 35 U.S.C. 102 and 103, and absent a clear indication in the specification or claims identifying the basic and novel characteristics of the claimed invention, the transitional phrase “consisting essentially of” has been interpreted as equivalent to “comprising.” Claim 5, and claims 6-10 depending therefrom, have been examined under the construction that the claimed composition is open to the inclusion of additional, unrecited components.
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US2021/0298307A1) filed Mar. 22, 2021, in view of Ng et al. (US20130267420A1) published Oct. 10, 2013).
Note: claim 12 recites the transitional phrase “consisting essentially of”. For purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, in the absence of a clear indication in the specification or claims identifying the basic and novel characteristics of the claimed invention, the phrase “consisting essentially of” will be construed as equivalent to “comprising.” If applicant contends that additional steps, components, or materials disclosed in the prior art are excluded by the use of “consisting essentially of,” Applicant bears the burden of establishing that the inclusion of such additional steps, components, or materials would materially affect the basic and novel characteristics of the claimed invention. PPG Industries Inc. V Guardian Industries Corp. 48 USPQ2d 1351 (Fed. Cir. 1998) and In re De Lajarte 337 F.2d 870, 143 USPQ 256 (CCPA 1964) See MPEP 2111.03.
Wang et al. disclose a composition for controlling and preventing bacterial wilt caused by Ralstonia solanacearum in plants susceptible to the disease. The disclosed composition comprises auxin and cytokinin. Wang et al. further disclose a method of controlling and preventing bacterial wilt through application of the disclosed composition (See abstract, paragraphs 0002 and 0008).
In one embodiment, the composition is provided as a concentrate for controlling and preventing bacterial wilt, comprises between about 1-50 g/L auxin and between about 5-50 g/L cytokinin (See paragraphs 0009, 0011, and 0013).
The auxin may be indole-3-butyric acid (IBA), indole-3-acetic acid (IAA), 1-naphthaleneacetic acid (NAA), or 4-dichlorophenoxyacetic acid (2,4-D) (See paragraph 0010).
The cytokinin may be N6-furfuryladenine (kinetin), 6-benzylaminopurine (BA), zeatin (ZT), 6-ɣ, ɣ-dimethyl-allylamino)purine (2iP), diphenylurea, and thidiazuron (TDZ) (See paragraph 0012).
In one embodiment, the composition is provided as a ready-to-use formulation for controlling and preventing bacterial wilt and comprises between about 1-50 mg/L auxin and between about 5-50 mg/L cytokinin (See paragraphs 0014-0016).
The composition may further comprise one or more adjuvants, including a surfactant, a drift control agent, or a combination thereof (See paragraph 0017). The concentration of the adjuvant in the ready to use composition is 0.01-1% (v/v) (See paragraph 0018 and claim 16).
Wang et al. further disclose a method for controlling and preventing bacterial wilt comprising applying a ready-to-use composition to a plant susceptible to bacterial wilt. The ready-to-use composition comprises auxin in an amount ranging from about 1 to 50 mg/L and cytokinin in an amount ranging from about 5 to 50 mg/L (See paragraph 0020). In one embodiment, the composition is applied to plant foliage as a foliar application or foliar spray. In one embodiment, the composition is applied to plant roots (See paragraph 0022).
In one embodiment, the composition is applied to a target plant during the vegetative phase. In another embodiment, the composition is applied to a target plant during the reproductive phase (See paragraph 0023).
However, Wang et al. do not disclose the inclusion of about 0.5-50 g/L of GABA and about 2.5-250 g/L of choline chloride in the concentrate composition or about 0.5-50 mg/L of GABA and about 2.5-250 mg/L of choline chloride in the ready to use composition. Ng et al. are relied upon for the foregoing disclosure.
Ng et al. disclose an aqueous composition for improving the low-temperature tolerance of plants, thereby reducing or preventing “chilling injury” and promoting improved recovery from such injury when the composition is applied to crop plants prior to the onset of a cold snap or period of low temperature (See abstract and paragraph 0002). Ng et al. further recognize a need for a treatment capable of combating oxidative damage at the cellular level that contributes to chilling injury when plants are exposed to low temperatures (See paragraph 0008). Ng et al. additionally disclose that antioxidant enzyme activity may be effectively increased through the appropriate selection and application of suitable substances, thereby enhancing a plant’s ability or capacity to withstand periods of low temperature (See paragraph 0017).
Ng et al. disclose that choline chloride has been demonstrated to protect plant cell membranes, which is particularly important for supporting plant survival and growth under various environmental conditions (See paragraph 0021). Ng et al. further disclose that gamma-aminobutyric acid (GABA), a metabolite of glutamate, accumulates in the cytoplasm in response to various stresses experienced by plants, suggesting that GABA plays a role in enhancing plant resistance to stressful environmental conditions (See paragraph 0023).
The aqueous chemical composition comprises 30 g/L of choline chloride and 25 g/L of GABA (para.0029). To prepare a ready-to-use spray, the aforementioned aqueous composition is diluted with water to 100 times its original volume (i.e., 30 mg/L choline chloride and 25 mg/L GABA).
Wang et al. and Ng et al. are both directed to compositions that provide beneficial effects to plants. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it prima facie obvious to combine the teachings of Wang et al. and Ng et al. by incorporating the GABA and choline chloride disclosed by Ng et al. into the corresponding concentrate and ready-to-use compositions of Wang et al. for application to plants.
One of ordinary skill in the art would have been motivated to make such a combination to provide a plant treatment capable of achieving the benefits taught by both references, namely, controlling and preventing bacterial wilt as taught by Wang et al., while additionally improving low-temperature tolerance, reducing or preventing chilling injury, and promoting recovery from such injury as taught by Ng et al.
One of ordinary skill in the art would have had a reasonable expectation of success in making the proposed combination because both Wang et al. and Ng et al. disclose compositions formulated for application to plants to confer beneficial effects. Thus, incorporating the plant-beneficial components taught by Ng et al. into the compositions of Wang et al. would have represented the predictable use of known components according to their established functions to obtain the combined benefits taught by the references.
With respect to the actions recited in claims 4, 10, and 18, although the cited prior art references do not appear to expressly disclose the claimed methods, the compositions resulting from the combined teachings of the cited references comprise the claimed combination of ingredients in amounts that overlap those recited in the instant claims. Absent evidence to the contrary, the compositions suggested by the combined teachings of the prior art would reasonably be expected to provide at least one of the actions or effects recited in claims 4, 10, and 18.
Therefore, the claimed invention, considered as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention because the combined teachings of the cited prior art references reasonably suggest the claimed compositions and their associated actions or effects.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (Wang) (US 2021/0298307 A1, filed Mar. 22, 2021, and Liu et al. (Liu) (US 2022/0386546 A1), filed June 7, 2021).
Applicant’s claims are reproduced above and are incorporated herein by reference.
The teachings of Wang et al. are discussed above and are incorporated herein by reference.
Wang does not appear to explicitly disclose the inclusion of about 0.5-50 g/L of GABA and about 2.5-250 g/L of choline chloride in the concentrate composition or about 0.5-50 mg/L of GABA and about 2.5-250 mg/L of choline chloride in the ready to use composition. Liu is relied upon for this disclosure. The teachings of Liu are discussed below.
Liu et al. disclose a method for regulating plant architecture comprising applying to a plant a composition containing GABA and choline chloride (See abstract). Liu et al. further disclose that the composition significantly regulates plant architecture by providing one of more beneficial effects, including increasing the total number of branches, reducing apical dominance, decreasing branch length, increasing leaf density, improving lodging resistance, increasing the total number of flowers and flower buds, and/or increasing flower density (See paragraph 0016).
The concentrate composition comprises about 5-125 g/L GABA and about 15-375 g/L choline chloride. Liu et al. define a “concentrate solution” as a solution intended to be diluted with water to prepare a use solution prior to application to the plant (See paragraph 0017).
In several embodiments, the concentrate composition for controlling plant architecture is diluted about 200-500 folds with water before use (See paragraph 0021). In one embodiment, the composition is a ready to use composition comprising about 10-625 mg/L GABA and 30-1875 mg/L choline chloride (See paragraph 0023 and 0025).
In one embodiment, the concentration of the adjuvant in the ready to use composition for controlling plant architecture is about 0.1% (v/v). The adjuvant may be a surfactant and/or a drift control agent (See paragraph 0026).
In several embodiments, the composition is applied to a plant during the vegetative phase. In several embodiments, the composition is applied to a plant during the reproductive phase (See paragraph 0032). In several embodiments, the composition is applied to plant foliage. In several embodiments, the composition is applied to plant roots (See paragraph 0033).
Wang et al. and Liu et al. are both directed to compositions that provide beneficial effects to plants. One of ordinary skill in the art, before the effective filing date of the instant invention, would have found it prima facie obvious to combine the teachings of Wang et al. and Liu et al. by incorporating the GABA and choline chloride disclosed by Liu et al. into the corresponding concentrate and ready-to-use compositions of Wang et al. for application to plants.
One of ordinary skill in the art would have been motivated to make the proposed combination to obtain the benefits taught by both references, namely, controlling and preventing bacterial wilt as taught by Wang et al., while additionally regulating plant architecture as taught by Liu et al.
One of ordinary skill in the art would have had a reasonable expectation of success in making the proposed combination because both Wang et al. and Liu et al. disclose formulations intended for application to plants to provide beneficial effects. Thus, incorporating the plant-beneficial components taught by Liu et al. into the compositions of Wang et al. would have constituted the predictable use of known components according to their established functions to obtain the combined plant benefits taught by the references.
With respect to the actions recited in claims 4, 10, and 18, although the cited prior art references do not appear to expressly disclose the claimed methods, the compositions resulting from the combined teachings of the cited references comprise the claimed combination of ingredients in amounts that overlap those recited in the instant claims. Absent evidence to the contrary, the compositions suggested by the combined teachings of the prior art would reasonably be expected to provide at least one of the actions or effects recited in claims 4, 10, and 18.
Therefore, the claimed invention, considered as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention because the combined teachings of the cited prior art references reasonably suggest the claimed compositions and their associated actions or effects.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-8, 10-11, and 13-21 of copending Application No. 17/470,167 (Copending 167) in view of Wang et al. (Wang) (US 2021/0298307 A1; filed Mar.22, 2021).
Although the claims at issue are not identical, they are not patentably distinct from one another because both sets of claims are directed to substantially similar and overlapping plant-beneficial compositions. In particular both the instant claims and the claims of copending Application No. 167 recite compositions comprising GABA and choline chloride in overlapping amounts.
The principal distinction between the instant claims and the claims of copending Application No. 167 is that the instant claims further recite auxin and cytokinin. Wang et al. are relied upon for teaching these additional components. The relevant teachings of Wang et al. are discussed above and are incorporated herein by reference.
Both Wang et al. and the claims of copending Application No. 167 are directed to compositions that provide beneficial effects to plants. One of ordinary skill in the art, before the effective filing date of the instant invention, would have found it prima facie obvious to modify the compositions claimed in copending Application No. 167 by incorporating the auxin and cytokinin taught by Wang et al. into the corresponding concentrate and ready-to-use compositions for application to plants.
One of ordinary skill in the art would have been motivated to make such a modification to obtain the combined plant benefits taught by the references, namely, regulating plant architecture as provided by the compositions of copending Application No. 167, while additionally controlling and preventing bacterial wilt as taught by Wang et al.
One of ordinary skill in the art would have had a reasonable expectation of success in making the proposed modification because both the claims of copending Application No. 167 and Wang et al. are directed to formulations intended for application to plants to provide beneficial effects. Thus, incorporating the auxin and cytokinin taught by Wang et al. into the claimed compositions of copending Application No. 167 would have represented the predictable combination of known plant-beneficial components for their established purposes.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kimberly Barber whose telephone number is (703) 756-5302. The examiner can normally be reached on Monday through Friday from 6:30 AM to 3:30 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax, can be reached at telephone number (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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/KIMBERLY BARBER/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
