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 .
Applicant’s election of Group III, claims 11-15, in the reply filed on March 23, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Priority
This application is a continuation-in-part (CIP) of U.S. Patent 12,402623 which is a continuation (CON) of U.S. Patent 11,812,74 which has provisional of 62/979,133 filed on February 20, 2020. However, the claims are drawn to a method of improving sugar yield in sugar beet plants with a mixture of (S)-abscisic acid (ABA) and cytokinin. The provisional, CIP and CON applications do not disclose in the specification a method of improving sugar yield in sugar beet plants with a mixture of ABA and cytokinin. Therefore, the effective filing date for this application is August 7, 2025 the date the application was filed.
Abstract
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art. It is suggested that applicants include “sugar beet plant”
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15 is 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. A person skilled in the art cannot determine the metes and bounds of the Markush claim because there is no boundaries to separate the embodiments encompassed by the claim from those that are not (MPEP 2117).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of “and sugar conjugates thereof” is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: sugar conjugates are broad group containing glucoside and glucose esters. Glucose esters are not a plant hormone from cytokinin. The specification describes “sugar conjugates” as “riboside and glucoside modified compounds”.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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.
Claim 15 is 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 phrase “and salts thereof” is unclear because it is uncertain if the “salts thereof” refers to benzyladenine, forchlorfenuron, thidiazuron, trans-zeatin, 2-siopentyl adenine, meta topolin, trans topolin or kinetin. If inventors are referring to the cytokinin and salts thereof, then it is suggested that either in line 1 should read --cytokinin and salts thereof is selected-- or in line 4 should read --kinetin, salts thereof and sugar conjugates--.
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.
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 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Zhong et al (CN105994334A) in view of Pospíšilova et al (Biologia Plantarium 48 (3): 395-399, 2004), Devisetty et al (U.S. Patent No. 9,023762 B2), Williams et al (US 2012/0108431 A1) and Aremu et al (Plant Cell Tiss Organ Cult (2014) 118:245-256).
The claims are drawn to a method of improving sugar yield in sugar beet plant by applying an effective amount of mixture of ABA and cytokinin selected from the group consisting of 6-benzyladenine (BA), forchlorfenuron, thidiazuron, trans-zeatin, 2-isopentyl adenine, meta topolin, trans topolin, kinetin and salts thereof and sugar conjugates thereof where the weight ratio of ABA to cytokinin is from about 10:1 to about 1:10, about 6:1 to about 1:10, to about 6:1 to about 1:1.5 or 4:1 to 1.1:1.
The phrase “salts thereof” will be interpreted as any form of salt.
Regarding claims 11-15, Zhong et al teach a plant growth regulator containing thidiazuron and ABA at weight ratio of 1:0.02 ~ 100 and preferably of 1:4, 1:6, and 1:10 (p. 2, 7th para. under Summary of the invention) which is within the ratio of ABA to cytokinin of 4:1 (claim 14), 6:1 (claims 12, 13) and 10:1 (claim 11). Other ingredients may be added with the plant growth regulator, such as herbicides, other plant growth regulators, fertilizers, etc. (p. 3, 2nd para.) The sugar conjugates would include herbicides containing glucosides and glucose esters (claim 15). The plants are not limited to Citrullus vulgaris (watermelon) and Vitis vinifera (grape) (p. 3, 15th para.) which could include sugar beet. Table 2 shows that the sugar content of grapes was improved (p. 5, last para.) Embodiment 3 teaches alkyl benzene sulphonate sodium salt (claim 15 salts thereof).
Zhong et al does not teach sugar beet.
Regarding claim 11, Pospíšilova et al teach pre-treatment of ABA and/or BA on French bean, sugar beet and maize leaves during water stress. The mixture of ABA and BA was 100 µM ABA and 10 µM BA or ratio of 10:1 (p. 396, col. 1, 3rd para.) With sugar beet the application of ABA+BA increased stomatal conductance (gs) (p. 397 col. 2, 1st full para. and Fig. 1).
The skilled artisan would have expected success in substituting the grape plant as taught by Zhong et al with the grape plant where the mixture of ABA and BA resulted in quality grapes with improved sugar content. Pospíšilova et al teach applying a mixture of ABA and BA increased gas exchange when under stress (p. 397, col. 2, 1st full para.) The person of ordinary skill in the art would have found it obvious to make the substitution because ordinarily skilled artisan would have predicted that the mixture of ABA and BA would have improve sugar contents in sugar beet.
Regarding claims 11, 14 and 15, Devisetty et al teach a plant growth regulator containing weight ratio of ABA to cytokinin from about 5:1 to about 40:1 where the cytokinin may be BA (col. 6, lines 41-44). The cytokinin may further comprise of kinetin, zeatin, thidiazuron and forchlorfenuron preferably 6-benzyladenine or kinetin (col. 9, lines 42-53). The plant growth regulator may further contain chelating agent such as tetrasodium EDTA (a salt, claim 15). The seed may be from other crop seed or propagule of agronomic interest (col. 6, lines 48-51), which could include sugar beet. The plant growth regulator may be applied as a foliar, drench, in-furrow or sprench application (col. 6, lines 66-67). Table 8 shows the components of the plant growth regulator including tetrasodium salt. Example 9 and Table 10 at col. 23 teaches the composition of 24.92% wt/wt ABA and 0.83% BA. Table 15 shows the various weight ratio of ABA to cytokinin from 1:1, 10:1, 2:1 and 4:1 (claim 14).
The claimed method requires specific weight ratio of ABA to cytokinin from about 6:1 to about 1:1.5 which overlaps with the range of 1:1, 2:1 and 4:1 of Devisetty et al. Because the claimed range overlaps with the range disclosed by the prior art, a prima facie case of obviousness exist.
Zhong et al, Pospíšilova et al and Devisetty et al do not teach sugar conjugates.
Regarding claim 15, Williams et al teach plant growth regulator with effective amount of anthranilie acid and effective salts ester and amides in combination with agrochemical additive to improve effects of plant growth regulator [0007]. The plant growth regulator would include adenine, 6-benzylaminopurine, kinetin, trans-Zeatin, Zeatin, trans-Zeatin riboside (sugar conjugate) ([0035], [0093] and claim 42). The plant growth regulator may contain growth stimulator including forchlorfenuron [0037].
Aremu et al describe the exogenous application of aromatic cytokinin including BA, meta-topolin mT, meta-topolin riboside (mTR) and 6-(3-methoxybenzylamino)-9tetrahydroipyran-2-ylpurine (MemTTHP) (abstract). One of the most import plant growth regulators is cytokinin in regeneration and proliferation of shoots (p. 246, col. 1). Exogenous applications of mTR and MemTTHP had highest rate of survival col. 2, last para.) Shoot proliferation on plants treated with mTR were best (p. 254 bridging p. 255).
The person of ordinary skill would have had a reasonable expectation of success in applying sugar conjugates thereof with the cytokinin because Aremu et al taught the advantages of applying aromatic cytokinin to plants for growth and development. Furthermore, Aremu et al taught the topolin type of aromatic cytokinin produce less toxic metabolites which would benefit the plant (p. 246, col. 2, 2nd para.) Williams et al taught that the plant growth regulator would include kinetin and salts thereof and sugar conjugates thereof (claim 42). The skilled artisan would have been motivated to add sugar conjugated knowing that these ingredients would improve plant growth which would in turn improve yield in plant especially sugar beet as taught by Pospíšilova et al. The skilled artisan would have further applied the teachings of Aremu et al, Williams et al, Pospíšilova et al and Devisetty et al because Zhong et al taught a plant growth regulator composition with cytokinin and ABA improve plant growth, crop yield and crop quality especially sugar yield and their method is not limited to Citrullus and Vitus which would include sugar beet (p. 3, 15th para.)
Conclusion
No claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUNE HWU whose telephone number is (571)272-0977. The examiner can normally be reached on M-TH 5:00AM-3:00PM.
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/June Hwu/
Primary Examiner, Art Unit 1661
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