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 interpretation
The claims recite “tonne” which is interpreted to be a metric tonne or 1000kg.
Claim Rejections - 35 USC § 112 – Indefiniteness
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 4 and 17 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.
The term “relative to the amount of the composition used for coating 1 tonne of the plant seed” in claim 4 and 17 is a relative term which renders the claim indefinite. The term “relative to the amount of the composition used for coating 1 tonne of the plant seed” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear what is meant by this term such that the artisan would reasonably appreciate the metes and bound of what is encompassed by it. Because the claim defines the amount of allantoin with respect to the amount of the composition used to coat 1 tonne of seeds, but fails to define the amount of composition used to coat 1 tonne of seeds, the amount of the allantoin in the composition is not defined. For the purposes of examination, the claims will be interpreted as an application rate; the composition comprises 10 gram or more allantoin capable of being used to coat 1 tonne of seeds.
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, 2, and 4-7 is rejected under 35 U.S.C. 101 because the claimed invention is directed to judicial exception (natural phenomenon) in the form of a composition comprising allantoin, an amino acid and an agriculturally acceptable carrier without significantly more.
The claims are evaluated below using the “Subject Matter Eligibility Test for Products and Processes” flow chart as shown in MPEP § 2106 III.
Step 1: Are the claims to a process, machine, manufacture, or composition of matter?
Yes. The claims read on a composition of matter, which is one of the four statutory categories.
Step 2A, Prong 1: Do the claims recite an abstract idea, law or nature, or natural phenomenon?
Yes. The claims recite a nature-based product produced by combining multiple components, specifically allantoin, an amino acid and an agriculturally acceptable carrier which reads on water. In such a case MPEP 2106.04(c)(I)A states, “the markedly different characteristics analysis should be applied to the resultant nature-based combination” and MPEP 2106.04(c)(II)A states “[w]hen there are multiple counterparts to the nature-based product, the comparison should be made to the closest naturally occurring counterpart.” In the present case, the closest naturally occurring counterpart appears to be allantoin. Naturally occurring allantoin is known to promote plant growth, as evidence by the abstract of Kaur et al. (Plant Molecular Biology Reporter, v. 39, p. 648-661). Furthermore, Applicant has not demonstrated synergy for allantoin and L-tryptophan, much less any amino acid, at any concentration and any weight ratio, as instantly claimed. For example, see Figure 1 of the instant application. Figure 1 shows an about 5% increase in aboveground growth when 0.045g/MT (metric tonne) of tryptophan is applied. Figure 1 also shows an about 5% increase in aboveground growth when 500g/MT allantoin are applied. Finally, when L-tryptophan and allantoin are both applied at the above concentrations, Figure 1 shows an about 10% increase in aboveground growth which amounts to merely an additive effect. Therefore, the combination of allantoin and an amino acid in an agriculturally acceptable carrier (e.g., water) does not have markedly different characteristics than the naturally occurring counterpart, and is treated as a product of nature judicial exception.
Step 2A, Prong 2: Do the claims recite additional elements that integrate the judicial exception into a practical application?
No. The judicial exception is not integrated into a practical application because there are no additional elements recited in the rejected claims.
Step 2B: Do the claims recite additional elements that amount to significantly more than the judicial exception?
No. The combination of allantoin, amino acids and an agriculturally acceptable carrier (e.g., water) is well understood, routine and conventional as evidenced by the presence of all three components in the composition disclosed at Example 3 (para. [0175-0225]) of CN‘178 (CN 107266178, publication date 10/20/2017; citing English translation in IDS filed 03/24/2025).
As claim 1, 2, and 4-7 recites a judicial exception that is not integrated into a practical application and recites no elements that amount to significantly more than the judicial exception, the claim is drawn to ineligible subject matter under 35 U.S.C. 101.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, 5-7 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN‘178 (CN 107266178, publication date 10/20/2017; citing English translation in IDS filed 03/24/2025).
CN’178 relates to a microbial culture composition for promoting plant growth [0001-0008]. Example 3 comprises 7 parts allantoin [0183], water [0190], and 2 parts amino acids [0199]. Tryptophan comprises 5 parts, about 25%, of the amino acids [0200-0204]. Accordingly, the composition comprises 0.5 parts tryptophan.
The prior art anticipates instant claims 1, 3, 5-7 and 15 because it discloses a composition comprising allantoin, tryptophan and an agriculturally acceptable carrier (water), wherein the tryptophan to allantoin weight ratio of 0.5:7, or 7.14:100, falls entirely within the instantly claimed range. Since the prior art composition contains substantially the same components, i.e., allantoin, tryptophan and an agriculturally acceptable carrier, in the same relative proportions as instantly claimed, it would be expected to inherently possess the same chemical and physical properties, such as being capable of the intended uses recited in instant claims 5-7.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
1) Claim(s) 2, 4 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN‘178 (CN 107266178, publication date 10/20/2017; citing English translation in IDS filed 03/24/2025) as applied to instant claims 1, 3, 5-7 and 15 above, and in further view of Keeling et al. (WO 2018215783 A1, publication date 11/29/2018; cited in IDS filed 03/24/2025).
CN’178, which is taught above, does not expressly disclose the L-enantiomer of tryptophan.
Keeling relates to a seed treatment composition comprising amino acids to improve seed performance [p. 2, lines 5-10]. Regarding the L and D enantiomers of the amino acids Keeling discloses “In the case of tryptophan, the use of L-tryptophan is preferred” [p. 4, lines 3-4].
Generally, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
In the present case it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have selected the L-tryptophan of Keeling for the tryptophan desired by CN’178 because Keeling discloses L-tryptophan is the preferred enantiomer for agriculturally compositions for promoting plant growth.
Furthermore, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). In the present case, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have optimized the amount of allantoin in composition to find the optimal workable range with respect to plant growth.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated the composition disclosed by CN’178, as discussed above, to comprise L-tryptophan. Wherein the composition comprises 10 grams allantoin and because the prior art contains substantially the same components as instantly claimed, it would have been expected to possess the same properties and be capable of satisfying the same applications, i.e. intended use of being used for coating 1 tonne of seeds (instant claim 4).
2) Claim(s) 8-10, 12-16 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN‘178 (CN 107266178, publication date 10/20/2017; citing English translation in IDS filed 03/24/2025) in view of Keeling et al. (WO 2018215783 A1, publication date 11/29/2018; cited in IDS filed 03/24/2025) as applied to instant claims 1-7, 15 and 17 above, and in further view of Bullis et al. (US 9,687,000 B2, date of patent 07/27/2017).
CN’178 and Keeling, which are taught above, differ from the instant claims insofar as they do not teach coating a seed.
CN’178 discloses the plant growth culture compositions are combined with microorganisms and applied to the soil [0225].
Keeling teaches the plant growth promoting composition comprising L-tryptophan [p. 4, lines 3-4] may be in the applied as a seed coating [abstract].
Bullis discloses microbial compositions for promoting plant growth [abstract]. In preferred embodiments the compositions are seed coating formulations [col. 3, lines 31-32]. In other embodiments Bullis discloses the compositions are applied to soil [col. 4, lines 6-9].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have substituted the seed coating of Keeling and Bullis in place of the soil application disclosed by CN’178. One would have been motivated to substitute these teachings because Bullis discloses seed coating formulations are preferred for plant growth compositions comprising microorganisms. One would have had an expectation of success because Bullis discloses seed coating and soil application are both suitable for plant growth promoting microbial compositions. Additionally, Keeling discloses plant growth promoting compositions comprising tryptophan may be applied as seed coatings. The simple substitution of one known element (e.g., the seed coating of Keeling and Bullis) in place of another (e.g., the soil application of CN’178) in order to achieve predictable results (promote plant growth) is prima facie obvious. See MPEP 2143, Exemplary Rationale B.
The methods of growing plants from the coated seed would have been obvious given the intended use of the prior art compositions is to promote plant growth.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have applied the composition taught by CN’178 and Keeling, as discussed above, as a seed coating and grown a plant from the seed coated seeds (instant claims 8-10, 12 and 18).
Regarding instant claim 13, it is noted that the claim scope is not limited by claim language, i.e. "wherein" or "whereby" clauses, that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure (see MPEP 2111.04). The court in Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005) noted (quoting Minton v. Nat'l Ass'n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) that a "'whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited'"(see Id.). In the present case, promoting initial plant growth would have been an inherent result of applying the prior art compositions because the prior art contains substantially the same components as instantly claimed.
Regarding instant clams 14 and 19, CN’178 discloses the composition provides “strong stress resistance” [0068].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have applied the composition taught by CN’178, Keeling and Bullis to plants exposed to stress because CN’178 discloses the compositions provide resistance to stress conditions. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have grown the plants, as discussed above, under stress conditions.
3) Claim(s) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keeling et al. (WO 2018215783 A1, publication date 11/29/2018; cited in IDS filed 03/24/2025) in view of Zhang et al (CN106305745A, publication date 01/11/2017; citing English machine translation).
Keeling “relates to seed treatment compositions, to a method for preparing the compositions and to their use, and to seeds coated in or treated with the compositions and to plants generated from the seeds” (i.e., instant claim 8) [abstract]. In preferred embodiments the compositions comprises tryptophan, i.e., L-tryptophan [p. 4, line 4], gibberellic acid and an agriculturally acceptable carrier [p. 6, lines 22-29]. Additionally, “the composition may further comprise one or more plant protection, plant health or plant growth products” [p. 7, lines 4-7]. Keeling discloses the seed coating compositions improve seed performance under conditions of biotic and abiotic stress, such as heat and drought stress [p. 10, line 23].
Keeling does not disclose allantoin.
Zhang “relates to a plant growth regulating composition containing allantoin” and a second active “selected from any one of the following compounds: […] gibberellic acid” [abstract]. The composition is for “improving the drought resistance and cold resistance of the plants, and having the functions of enhancing the immunity, enhancing the disease and insect resistance, improving the quality of the crops and increasing the yield and income” [abstract]. According to Zhang, the combination of allantoin and gibberellic acid has a synergistic effect (see [p. 6, last para.] and [p. 10, para. 8 (Table 12)]). The compositions “can also be made into seed coating” [p. 5, first full paragraph].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have combined the allantoin of Zhang with the compositions disclosed by Keeling which comprise gibberellic acid. One would have been motivated because Zhang discloses synergy between allantoin and gibberellic acid in compositions for improving drought resistance, temperature resistance and yield, as desired by Keeling. One would have had an expectation of success because Zhang teaches allantoin seed coating formulations, and Keeling welcomes additional plant growth products. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
It also would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have coated a seed with the composition taught by Keeling and Zhang because the intended use of Keeling is a seed coating composition.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have coated a seed with a composition comprising allantoin, L-tryptophan and an agriculturally acceptable carrier (i.e., instant claims 1, 2, 8, 9). Since the prior art composition contains substantially the same components, i.e., allantoin, tryptophan and an agriculturally acceptable carrier, in the same relative proportions as instantly claimed, it would be expected to inherently possess the same chemical and physical properties, such as being capable of the intended uses define in instant claims 5-7.
Regarding instant claim 3, 10, 11, 15, 16, and 18, Keeling discloses the compositions comprises 0.005-0.1 mg tryptophan per kg seed and 8-40 mg gibberellic acid per kg seed (e.g. 10 mg gibberellic acid per kg seed) [p. 6, lines 22-28].
Zhang desires a weight ratio of allantoin to gibberellic acid of between 25:1 to 1:30 (e.g., 1:1 allantoin to gibberellic acid) [p. 4, line 8 of the 4th to last paragraph].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the prior art teaches 10mg allantoin per kg seed (i.e., 1:1 ratio of allantoin to gibberellic acid of Zhang, wherein gibberellic acid is 10mg/kg seed of Keeling) and therefore the ratio tryptophan to allantoin is, for example, 0.1:10 (i.e., 0.1mg/kg tryptophan to 10mg/kg allantoin). Accordingly, the instantly claimed ranges of 0.009-50 parts amino acid (tryptophan) to 100 parts allantoin (instant claims 3, 10, 15, 16 and 18) and the application rate of 10g allantoin per 1 tonne seed (instant claims 4 and 11) overlap with the ranges of the prior art which teach, for example, 0.1:10 tryptophan to allantoin (10:100 tryptophan to allantoin) and 10mg allantoin per kg seed (10gram allantoin per 1000kg or 1 tonne seed) and so a prima facie case of obviousness exists.
Regarding instant claim 12-14, and 19, Keeling discloses a method for growing a plant comprising sowing a coated seed, growing a plant from the seed under stress and obtaining plants having improved growth characteristics [paragraph spanning pages 2 and 3]. According to Keeling the compositions disclosed therein improve final emergences in non-saline and saline irrigation (i.e., salt stress) [page 14, lines 5-29 and Figure 2].
Improvements in final emergence is “promoting initial an initial plant growth” per instant claim 13 insofar as growth is promoted in “a period from germination to the middle of the vegetative growth stage” (i.e., “initial growth” as defined by the instant specification at paragraph 28).
Generally, it is a prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. In the present case it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have selected the compositions disclosed by Keeling and Zhang for the methods desired by Keeling because Keeling and Zhang both teach a seed coating compositions for promoting plant growth.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have seeded a seed coated with the compositions comprising allantoin and L-tryptophan, as discussed above, and grown a plant from the coated seed under stress conditions, wherein the methods comprises promoting an initial plant growth under stress conditions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLMAN WELLES whose telephone number is (571)272-3843. The examiner can normally be reached Monday - Friday, 8:30am - 5:00pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at (571)272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.T.W./Examiner, Art Unit 1612
/WALTER E WEBB/Primary Examiner, Art Unit 1612
