DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Petition under 37 CFR 1.102(c)(1)
The petition under 37 CFR 1.102(c)(1) to make the application special based on applicant’s age was granted on 3 March 2025. Therefore, the application is SPECIAL.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1 and 25, drawn to a composition comprising zinc, copper, and an acid, classified in A01N 59/16.
II. Claims 29, 35, 38-39, 43-44, 47-54, and 57-59, drawn to a method of reducing cellular damage, classified in A01N 59/16.
III. Claims 32, drawn to a method of promoting plant growth, classified in A01N 59/16.
IV. Claims 31, 33-34, 45-46, and 55-56, drawn to a method of priming a plant against biotic and abiotic stress factors, classified in A01N 59/16.
V. Claims 36-37, drawn to a method of controlling a fungus infection in a plant, classified in A01N 59/16.
VI. Claims 63-64, drawn to a method of making a composition of claim 1, classified in A01N 59/16.
The inventions are independent or distinct, each from the other because:
Inventions I and II-V are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the processes as claimed can be practiced with another materially different product, such as priming a plant with at least one ascaroside (WO 2014/145380 A2); promoting plant growth by applying at least one water-insoluble inorganic micronutrient selected from the group consisting of tricalcium phosphate, manganese dioxide, calcium titanate, magnesium oxide, calcium silicate, and silicon dioxide (US 2008/0271368 A1); and controlling a fungal infection in a plant by applying an extract derived from a Reynoutria sp. plant (US 8,883,227).
Inventions I and VI are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the process as claimed can be used to make a materially different product, such as any agrochemical or pharmaceutical composition wherein a component is a microparticle.
Inventions II-VI are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed each have different effects, i.e., methods of (1) reducing cellular damage to a plant, (2) promoting plant growth, (3) priming a plant against abiotic and biotic stress factors, (4) controlling a fungus infection in a plant, and (5) making a composition. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
-- the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and
-- the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Gertrud U. Rey on 12 February 2026 a provisional election was made without traverse to prosecute the invention of IV, claims 31, 33-34, 45-46, and 55-56. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1, 25, 29, 32, 35-37, 38-39, 43-44, 47-54, 57-59 and 63-64 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Objections
Claim 46 is objected to because of the following informalities: the terms ketoisocaproic, cyclohexaneacetic, and cyclohexadiene should not be capitalized; and the term “aconitine” is misspelled as “acontine”. Appropriate correction is required.
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 31, 33-34 and 45-46 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kennedy (US 9,266,785).
Regarding instant claim 33, Kennedy discloses a composition comprising sulfuric acid, zinc and copper, wherein the composition acts as a free oxygen scavenger to alleviate plant stress, for example, under drought and mechanical damage, wherein the ratio of copper to zinc is 2:7 (Abstract; col. 1, ln. 28 to col. 2, ln. 67; Example 1; Claims 1, 3, and 8).
Regarding instant claim 31, Kennedy discloses treating plants under abiotic stress conditions, including drought (col. 1, ln. 35; col. 2, ln. 14-15, 38-41 and 63-67; col. 3, ln. 46-47; col. 4, ln. 12-16; Example 1).
Regarding instant claim 34, Kennedy discloses that seedlings gain improved hardiness for adverse conditions (abiotic stressors and climate stress), increased tolerance to insect attack, and better physical stability of plants in growth medium (pots, soil) (Example 1).
Regarding instant claims 45-46, Kennedy discloses treating plants with a composition comprising zinc, copper, and an acid, wherein the plants gain increased tolerance to abiotic and biotic stress factors. Application of the compositions according to Kennedy will inherently increase production of one or more plant priming biomarkers, including one or more biomarkers listed in instant claim 46.
The examiner respectfully points out the following from MPEP 2112: “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court stated that “just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel.”
Claims 31, 33-34 and 45-46 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liang et al. (CN 104892208 A).
Regarding instant claim 33, Liang et al. disclose a liquid composite trace element fertilizer comprising in weight percentage 0-1.0% citric acid, 0.18-3.3% copper sulfate pentahydrate, and 0.25-2.3% zinc sulfate monohydrate (Abstract; pg. 1; and Claim 1). Liang et al. further disclose application of compositions to plants, wherein the compositions comprise citric acid, zinc and copper, and a ratio by weight of copper sulfate pentahydrate to zinc sulfate monohydrate of 6:100 (Example 2).
Regarding instant claims 31, 33-34 and 45-46, Liang et al. disclose treating plants with a composition comprising zinc, copper, and an acid, wherein the plants yield increased. Application of the compositions according to Liang et al. will inherently prime the plant against biotic and abiotic stress and increase production of one or more plant priming biomarkers, including one or more biomarkers listed in instant claim 46.
The examiner respectfully points out the following from MPEP 2112: “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court stated that “just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel.”
Claims 31, 33-34 and 45-46 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ru (CN 1986495 A).
Regarding instant claims 31 and 33-34, Ru discloses a clear liquid fertilizer composition comprising 40-100 kg/m3 (i.e., ~4-10% by weight) of a trace element and 80-200 kg/m3 (i.e., ~8-20% by weight) of a chelating agent, wherein the trace element comprises copper sulfate pentahydrate and zinc sulfate monohydrate in an elemental mass ratio of Cu to Zn of 0.1 to 2.0 : 0.2 to 5.0, and the chelating agent comprises citric acid (pg. 1-2; Claims 1-2). Ru discloses that the fertilizer compositions improve growth and development of the plant and also provide the ability to resist disease, drought, lodging, and hot and dry wind, i.e., plant priming (pg. 2).
Ru specifically discloses a composition comprising 10 wt.% citric acid, 0.5 wt.% copper sulfate pentahydrate, and 1.0 wt.% zinc sulfate monohydrate (weight ratio of copper sulfate pentahydrate to zinc sulfate monohydrate of 1:2) (Example 1). Ru further discloses the elemental mass ratio of Cu to Zn of 0.1 to 2.0 : 0.2 to 5.0, and further provides examples comprising a weight ratio of copper sulfate pentahydrate to zinc sulfate monohydrate of 1:2 or 1:5 (Examples 1-2 and 5).
Regarding instant claims 45-46, Ru discloses treating plants with a composition comprising zinc, copper, and an acid, wherein the compositions improve growth and development of the plant and also provide the ability to resist disease, drought, lodging, and hot and dry wind, i.e., plant priming (pg. 2). Application of the compositions according to Ru will inherently prime the plant against biotic and abiotic stress and increase production of one or more plant priming biomarkers, including one or more biomarkers listed in instant claim 46.
The examiner respectfully points out the following from MPEP 2112: “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court stated that “just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel.”
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 55-56 are rejected under 35 U.S.C. 103 as being unpatentable over Kennedy (US 9,266,785) as applied to claims 31, 33-34, and 45-46 above, further in view of Van Oosten et al. (Chemical and Biological Technologies in Agriculture, 2017), and Dinler et al. (Acta Biologica Cracoviensia Series Botanica, 2016).
Regarding instant claims 55-56, Kennedy does not explicitly disclose compositions comprising fulvic acid in an amount of between about 1% and about 5% of the total weight, as instantly claimed.
Van Oosten et al. teach that fulvic acid improves abiotic stress tolerance in plants (Fig. 3) (Abstract; Table 1; pg. 6, col. 2).
Dinler et al. teach that fulvic acid protected soybean plants against stress-induced damage not only by maintaining the water balance, proline content and ABA levels but also by reducing toxic ion contents (Na+, Cl-, Ca2+) and inducing antioxidant enzyme activities and some important gene expression in soybean leaves (pg. 39, Conclusions).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to include fulvic acid in the compositions according to Kennedy in order to further protect the plants against stress-induced damage, as reasonably suggested by Van Oosten et al. and Dinler et al. A person of ordinary skill in the art would have been motivated include an effective concentration of fulvic acid in the compositions according to Kennedy, such that the application of the composition increases the plants resistance to biotic and abiotic stresses.
Claims 55-56 are rejected under 35 U.S.C. 103 as being unpatentable over Liang et al. (CN 104892208 A) as applied to claims 31, 33-34, and 45-46 above, further in view of Van Oosten et al. (Chemical and Biological Technologies in Agriculture, 2017), and Dinler et al. (Acta Biologica Cracoviensia Series Botanica, 2016)
Regarding instant claims 55-56, Liang et al. do not explicitly disclose compositions comprising fulvic acid in an amount of between about 1% and about 5% of the total weight, as instantly claimed.
Van Oosten et al. teach that fulvic acid improves abiotic stress tolerance in plants (Fig. 3) (Abstract; Table 1; pg. 6, col. 2).
Dinler et al. teach that fulvic acid protected soybean plants against stress-induced damage not only by maintaining the water balance, proline content and ABA levels but also by reducing toxic ion contents (Na+, Cl-, Ca2+) and inducing antioxidant enzyme activities and some important gene expression in soybean leaves (pg. 39, Conclusions).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to include fulvic acid in the compositions according to Liang et al. in order to further protect the plants against stress-induced damage, as reasonably suggested by Van Oosten et al. and Dinler et al. A person of ordinary skill in the art would have been motivated include an effective concentration of fulvic acid in the compositions according to Liang et al., such that the application of the composition increases the plants resistance to biotic and abiotic stresses.
Claims 55-56 are rejected under 35 U.S.C. 103 as being unpatentable over Ru (CN 1986495 A) as applied to claims 31, 33-34, and 45-46 above, further in view of Van Oosten et al. (Chemical and Biological Technologies in Agriculture, 2017), and Dinler et al. (Acta Biologica Cracoviensia Series Botanica, 2016)
Regarding instant claims 55-56, Ru does not explicitly disclose compositions comprising fulvic acid in an amount of between about 1% and about 5% of the total weight, as instantly claimed.
Van Oosten et al. teach that fulvic acid improves abiotic stress tolerance in plants (Fig. 3) (Abstract; Table 1; pg. 6, col. 2).
Dinler et al. teach that fulvic acid protected soybean plants against stress-induced damage not only by maintaining the water balance, proline content and ABA levels but also by reducing toxic ion contents (Na+, Cl-, Ca2+) and inducing antioxidant enzyme activities and some important gene expression in soybean leaves (pg. 39, Conclusions).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to include fulvic acid in the compositions according to Ru in order to further protect the plants against stress-induced damage, as reasonably suggested by Van Oosten et al. and Dinler et al. A person of ordinary skill in the art would have been motivated include an effective concentration of fulvic acid in the compositions according to Ru, such that the application of the composition increases the plants resistance to biotic and abiotic stresses.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 31, 33-34, 45-46, and 55-56 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 9,266,785. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘785 claims a method of supplementing nutritional intake of a plant comprising treating a plant with a composition comprising ammonium hydrogen sulfate, sulfuric acid, water, copper sulfate and zinc sulfate, wherein the ratio of zinc to copper is 7:2. The method according to US ‘785 would inherently also prime the plant against biotic and abiotic stress factors, as instantly claimed.
Claims 31, 33-34, 45-46, and 55-56 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-11 and 13 of copending Application No. 18/834,973. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘973 Application claims a method of priming a tomato plant against abiotic stress factors or biotic stress factors comprising treating the plant with a composition comprising zinc, copper and acid, wherein the ratio of copper to zinc is between 1:2 and 1:20. The species of tomato is within the scope of the instantly claimed plant.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached on (571) 272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.W.S/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616