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 .
The preliminary amendment received August 19, 2025 is acknowledged and entered.
Status of the Claims
Claims 16-20 are cancelled; claims 1-15 will be examined on the merits.
Priority
The present application filed on August 19, 2025 is a continuation of 18/105,975 filed on February 6, 2023, U.S. Patent 12,408,669 which is continuation of 16/934,263 filed on July 20, 2020, U.S. Patent 11,589,589.
Drawings
The drawings received on August 19, 2025 are accepted.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on November 17, 2025 is considered by the examiner.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 3-4,13 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 and 3-5 of prior U.S. Patent No. 11,589,589 B2. This is a statutory double patenting rejection.
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 1-2, 13-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-7 of U.S. Patent No. 11,589,589 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 drawn to a plant growth composition of mixture of inert compounds and active component combination amount of auxin, amount of gibberellin and amount of cytokinin where the amount of auxin is more than the amount of gibberellin plus amount of cytokinin, where the ratio of cytokinin to auxin is 1:10.5 to about 1:4.5.
Regarding instant claim 2 dependent on instant claim 1, the ratio of cytokinin to gibberellin in the active component combination is about 1:6 to 5:4 which overlaps with patent claim 2 ratio of cytokinin to gibberellin of about 1:5 to about 1:6. Because the claimed range overlaps with the range disclosed by the prior art, a prima facie case of obviousness exists.
Regarding instant claim 13 drawn to a plant growth composition containing a mixture of inert compounds and active component combination of amount of auxin, amount of gibberellin and amount of cytokinin where the amount of auxin is greater than amount of auxin is greater than amount of gibberellin and where the amount of gibberellin is less than the amount of cytokinin and where the amount of cytokinin is about 10 to about 20 wt% by weight of active component combination.
Regarding instant claim 14 which is dependent on instant claim 13, the amount of auxin is about 65 to about 80 wt% by weight of active combination which overlaps with patent claim 6 amount of auxin is about 70 to about 78 wt% by weight of active component combination.
Regarding instant claim 15 dependent on instant claim 13, the amount of gibberellin is about 5 to about 15 wt% by weight of active component combination overlaps with patent claim 7 of amount of gibberellin is about 7 to about 14 wt% by weight of active component combination. Because the claimed range overlaps with the range disclosed by the prior art, a prima facie case of obviousness exists.
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.
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.
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.
Claims 1-4, 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (CN106538200A including English translation 6 pp.) in view of Geetha et al (Annual Research & Review in Biology 13(3) 1-11, 2017; Article no. ARRB.29637), Mundhra et al (201711011433 A, 37 pp.) and Stoller et al (U.S. Patent no. 8,207,091 B2).
The claims are drawn to a plant growth composition comprising a mixture of inert compounds and active component combination amounts of auxin, GA and cytokinin where the auxin is dominant in the active component combination, and where the ratio of cytokinin to auxin in the active component combination is about 1:10.5 to about 1:4.5.
Regarding claim 1-3, Zhang et al teach promoting budding of Dendrobium cuttings with a liquid preparation containing 120-140 ppm auxin, 50-60 ppm gibberellin (GA), 40-50 ppm cytokinin, 20-30 ppm abscisic acid, 0.1-0.3% magnesium sulfate, 0.2-0.3% ferrous sulfate, 0.1-0.2% manganese sulfate, 0.2-0.4% zinc sulfate, 0.05-0.15% cupric sulfate, 2-4% glucose, 1-2% chitosan, 1-2% vitamins, 0.3-0.5% boric acid, 1-1.5% sodium nitrophenolate and balance of water (p. 1 at 2 of English translation). Water is an inert compound (claim 1). The ratio of cytokinin to auxin is 1:3 to 5:14 or 1:2.4 -1:3.5 (claim 1). Although, the ratio of the cytokinin to auxin is not specifically as claimed, it would have been obvious to adjust the amount of cytokinin and auxin depending of plant species and the starting material. The ratio of cytokinin to GA is 4:5 to 5:6 or 1:1.25 to 1:1.2 (claim 2). Although, the ratio of the cytokinin to GA is not specifically as claimed, it would have been obvious to adjust the amount of cytokinin and auxin depending of plant species and the starting material. The ratio of GA to auxin is 5:12 to 3:7 or 1:2.4 to 1:2.3 (claim 3). Although, the ratio of the GA to auxin is not specifically as claimed, it would have been obvious to adjust the amount of cytokinin and auxin depending of plant species and the starting material. The amount of auxin by weight is about 58 to about 66 wt.%. The amount of GA is about 23-24 wt.%. The amount of cytokinin is about 19 to 20 wt.%. Zhang et al method of applying plant growth hormones can increase bud germination rate, break dormant stems, induce division and differentiation of cuttings and buds resulting in improved plant efficiency (p. 2, 6th para. of English translation). The method of Zhang et al taught the plant growth composition of the instant claims by applying the plant growth composition of active component combination of auxin, GA and cytokinin.
Regarding claim 1 mixture of inert compounds, Mundhra et al describes a plant growth stimulator comprising of natural GA (0.05 to 1%), cytokinin (0.05 to 1%) and auxin (0.005 to 1%) (p. 6 and Table 1). The plant growth stimulator contains inert compounds of emulsifier, preservative, stabilizer and solvent (patent claim 6). Emulsifiers are a blend of ionic and non-ionic surfactants (patent claim 7). Preservatives are 1,2-benziosothiazolin-3-one and/or 2-Methyl-2H-isothiazol-3-one or 5-chloro-2-methyl-4-isothiazolin-3-one or sodium benzoate or benzoic acid (patent claim 8). Stabilizers are carboxylic acids and suitable salts (patent claim 9). Solvents are C9 aromatic solvents, isopropyl alcohol, methanol and polar green solvent (patent claim 10). The method of Mundhra et al taught the combination of plant growth composition of the instant claims.
The person of ordinary skill in the art would have reasonable expectation of success of a mixture of inert compounds as taught in Mundhra et al because a mixture of inert compounds would improve effectiveness of the plant hormones, safety, handling and storage of the plant growth composition. The skilled artisan would have been motivated to add a mixture of inert compounds to the plant growth composition because emulsifiers would improve adhesion and permeability of the composition; solvent would improve stability of composition and solubility characteristics; and water would aid in mixing and application of the composition.
Regarding claims 1-3, Geetha et al teach that high auxin to cytokinin ratio promotes activation of shoot branching in mulberry (p. 5 bridging p. 6). Geetha et al further teach that auxin and cytokinin enhances leaf yield (p. 6, col. 1, lines 6-9). 0.6 µM GA and 4.4 µM 6-benzylaminopurine (BAP-cytokinin) enhanced bud break frequency in mulberry (p. 6, col. 1, 4th para.) Geetha et al further teach that auxin and cytokinin increase growth and yield of mulberry plants by 17% (p. 6, col. 1, 1st para.)
The person of ordinary skill would have had a reasonable expectation of success in applying higher amounts of auxin to cytokinin or GA because Geetha et al taught high auxin to cytokinin promoted shoot branching. Zhang et al also taught high auxin to cytokinin and/or GA promoted budding cuttings which overall improved plant growth. The skilled artisan would have been motivated to apply high auxin over cytokinin because Geetha et al taught that auxin and cytokinin increased chlorophyll and higher photosynthesis resulted in increased leaf area index and leaf yield (p. 6, col. 1, lines 6-9). In addition, one of ordinary skilled in the art would have been motivated to adjust the amount of cytokinin to auxin depending on plant species because Geetha et al further noted that the auxin and cytokinin were effective in other Morus species but ineffective in M. laevigata (p. 6, col. 1, lines 12-14).
Regarding claim 3, Zhang et al teach the ratio of GA to auxin is 1:2.4 to 1:2.3. Stoller teach that an effective amount of auxin may be applied sufficiently to produce the desired results and other plant hormones such as GA and cytokinin can be added (col. 15, lines 54-67).
The person of ordinary skill would have had a reasonable expectation of success in adjusting the GA so that the ratio of GA to auxin would be about 1:16 to about 3:5 knowing that Stoller et al taught to adjust the plant hormones for the desired results. Zhang et al taught that the amount of GA is less than the amount of auxin which resulted in improved rate of germination cutting and shortened the budding duration (p. 4, last paragraph and Table 1). Geetha et al taught that high auxin to cytokinin improved plant growth. Stoller’s PGR solution comprising of higher amounts of total auxin compared to the amount of GA resulted in increased plant height, larger canopy diameter and increased root weight (col. 22, lines 16-19 and Table VI). The skilled artisan would have been motivated to adjust the plant hormones ratio to produce maximum yield as taught in Stoller et al (col. 14, lines 46-67).
Regarding claim 4, although none of the references specifically teach the active component combination of auxin to cytokinin and gibberellin together is about 5:1 to 3:2.
It would have been obvious to combine the teachings of Zhang et al, Mundhra et al and Geetha et al because Zhang et al taught method of promoting growth with high auxin, gibberellin and cytokinin to improve plant efficiency if buds. Mundhra et al taught the combination of plant growth composition. Geetha et al taught high auxin to cytokinin ratio promotes activation of shoot branching in mulberry. The person of ordinary skill in the art would have found it obvious to combine the plant growth composition because ordinarily skilled artisans would have recognized that the combination of plant growth regulators would have improved plant growth. The person of ordinary skill in the art would have further adjusted the plant growth regulators to fit the plant species.
Regarding claims 13-15, Stoller et al teach a method of improving crop by adjusting plant hormones levels. The plant growth regulator (PGR) aqueous solution contains active ingredients of 0.015% IAA, 0.005% IBA, 0.009% cytokinin, 0.005% gibberellic acid (GA) and inactive ingredients of 1.000% emulsifiers, 0.850% surfactant, and 0.050% defoamer (Example 1, col. 18, lines 48-52). When auxins (IAA and IBA) are added together the total auxin active ingredient is 0.02% which is the dominant active component (claim 13) combination of GA and cytokinin together is 0.014%. The ratio of GA to auxin is 1:4. The ratio of cytokinin to auxin is 1:2.2. The ratio of auxin to cytokinin and GA together is 1:7. Auxin is about 59 wt.% by weight, GA is about 15 wt.% by weight (claim 15) and cytokinin is about 26 wt.% by weight (claim 13). The amount of auxin (0.020%) is greater than the amount of GA plus cytokinin (0.014%). A small amount of inactive ingredients is emulsifier (inert compound), surfactant (inert compound) and defoamer with water are added to the PGR (col. 18, lines 51-56). Water is an inert compound (claim 13). Stoller further teach the amount of hormones would depend on the stage of plant growth (col. 12, lines 39-50). Stoller et al teach plant hormones of auxin, GA and cytokinin where the total amount of auxin is greater than amount of GA plus amount of cytokinin (claim 13). Example 4 (col. 21-22) shows the PGR treatment with 0.015% IAA, 0.005% IBA, 0.009% cytokinin, 0.005% GA had the greatest bushiness and better root growth in pepper plants. The amount of GA plus cytokinin is 0.014% where the amount of auxin 0.020% is greater than GA plus cytokinin. Stoller teach that the amount of hormones depend on stage of plant growth (col. 12, lines 39-50).
Regarding claim 14, Stoller et al do not specifically teach the amount of auxin is about 65 to about 80 wt% by weight of active component combination it would have been obvious to adjust the amount of plant growth regulators depending of the plant species.
The skilled artisan would have expected success in substituting the amount of GA is less than the amount of cytokinin as taught by Stoller et al because Stoller et al taught the amount of auxin would have to be manipulated through the root system where growth can be controlled by adjusting the hormone levels and ratios resulting in increased root size, extend root life, alter internode length, increase lateral branching, regulate top growth and increase fruit quality (col. 15, lines 46-53).
The skilled artisan could substitute the amount of GA so that it is less than the amount of cytokinin because Stoller et al teach an effective amount of auxin may be applied sufficiently to produce the desired results and other plant hormones such as GA and cytokinin can be added (col. 15, lines 54-67). Stoller et al taught that depending on the condition of the plant another plant hormone may be applied to counter act the conditions of the plant. For example, auxin moves into root tissues usually in small amounts but too much auxin in the roots may be harmful. The high amount of auxin can be controlled by adding cytokinin to counteract the increase (col. 14, lines 9-41). GA usually increase IAA oxidase and can control cell growth (col. 17, lines 34-37). Low cytokinin to auxin ratio would favor root development (col. 9, lines 27-30).
The claimed plant growth composition requires an amount of auxin of about 65 to about 80 wt.% by weight. Zhang et al taught the amount of auxin is about 58 to about 66 wt.% by weight which is within the range (claim 14). In addition, the amount of cytokinin as claimed is about 10 to about 20 wt% of active component and Zhang et al taught the amount of cytokinin is about 19 to 20 wt.% by weight (claim 13). The claimed ranges overlap with the ranges disclosed by the prior art, a prima facie case of obviousness exist.
Additionally, Applicants are reminded that as stated in claims 1 and 13, the word “comprising” is understood to be open-ended suggesting unknown components that are included in the procedure. “Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim. See MPEP 2111.03.
Claims 5-12 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (CN106538200A including English translation 6 pp.) in view of Stoller et al (U.S. Patent no. 8,207,091 B2).
The claims are drawn to a method of improving plant growth by applying a growth composition to plants or parts thereof with a mixture of inert compounds and active component combination amounts of auxin, GA and cytokinin where the amount of auxin is greater than amount of GA, where the amount of GA is greater than amount of cytokinin and where the amount of cytokinin is 0.1 to 10 wt% by weight of active component combination and growing the plants to at least a vegetative growth stage to improve plant growth.
Regarding claims 5, 7, Zhang et al teach promoting budding of Dendrobium cuttings with a liquid preparation containing 120-140 ppm auxin, 50-60 ppm GA, 40-50 ppm cytokinin, 20-30 ppm abscisic acid, 0.1-0.3% magnesium sulfate, 0.2-0.3% ferrous sulfate, 0.1-0.2% manganese sulfate, 0.2-0.4% zinc sulfate, 0.05-0.15% cupric sulfate, 2-4% glucose, 1-2% chitosan, 1-2% vitamins, 0.3-0.5% boric acid, 1-1.5% sodium nitrophenolate and balance of water (p. 1 at (2) of English translation). Water is an inert compound (claim 5). The amount of auxin (120-140 ppm) is greater than amount of GA plus cytokinin (combined of 90-110 ppm) (claim 5). The amount of auxin by weight is about 58 to about 66 wt.% which is within the weight amount of about 50 to about 70 wt.% by weight (claim 7). The amount of GA is about 23-24 wt.% by weight. The amount of cytokinin is about 19 to 20 wt.% by weight. The cuttings are treated with the liquid preparation to promote germination which is improving growth of the plants. (p. 1 at (3) of English translation) which is improving plant growth. Zhang et al method of applying plant growth hormones can increase bud germination rate, break dormant stems, induce division and differentiation of cuttings and buds resulting in improved plant efficiency (p. 2, 6th para. of English translation).
Regarding claims 9-12, Stoller et al teach plant hormones of auxin, GA and cytokinin where the total amount of auxin is greater than amount of GA plus cytokinin. Example 4 (col. 21-22) shows the PGR treatment with 0.015% IAA, 0.005% IBA, 0.009% cytokinin, 0.005% GA had the greatest bushiness and better root growth in pepper plants. 1.000% emulsifier, an inert compound, was also in the solution (col. 21, line 55-56). The application of the hormones may be applied to seeds or tubers prior to planting (col. 5, lines 46-48) (claim 10). Plant hormone may to applied to roots, foliage, flowers and fruits on plants as an aqueous solution (col. 5, lines 55-64) (claim 9). Example 6 shows an experiment with corn where the corn stem circumference increased with increased concentration of PGR solution (col. 23) (claim 11). The PGR composition in the corn was the same as in Example 4. Example 10 (col. 25-26) shows an increase in potato yield in lb./plant when compared to the control with 0.015% IAA, 0.005% IBA, 0.009% cytokinin, 0.005% GA and 1.000% emulsifier (claim 12). The application of auxin into the upper foliage part of the plant and root system with regular abundance can control the activity of GA resulting in control of growth of plant (col. 12, line 51 - col. 13, line 2). Cytokinin may be applied before flowering to increase meristematic roots which increase plant life and reduce plant stress (col. 14, lines 56-62). The amount of auxin, cytokinin and GA would depend on plant stage of growth as cited by Stoller on col. 12, lines 39-50. Stoller states, “Because conditions for plant growth are never ideal as defined here, hormone levels are not always at optimum concentrations” (col. 14, lines 63-65).
The skilled artisan would have expected success in substituting the amount of GA is less than the amount of cytokinin as taught by Stoller et al because Stoller et al taught the amount of auxin would have to be manipulated through the root system where growth can be controlled by adjusting the hormone levels and ratios resulting in increased root size, extend root life, alter internode length, increase lateral branching, regulate top growth and increase fruit quality (col. 15, lines 46-53). Stoller et al further states that while auxin is applied sufficiently to produce the desired effect which also must be applied insufficiently to negatively affect plant growth (col. 15, lines 54-60). The level, ratio or effectiveness of applied hormone may be manipulated for the desired results by applying other hormones such as cytokinin and gibberellic acids in effective amounts (col. 15, lines 60-67).
Regarding claims 6, 8, none of the references specifically teach the amount of cytokinin is about 3 to about 9 wt.% by weight and the amount of GA is about 30 to about 40 wt.% by weight. Zhang et al taught the application of the auxin, GA and cytokinin improved germination of buds would increase plant efficiency by quickening early growth, enhancing root development and improving overall establishment of plants. Stoller et al taught applying plant hormones to plants can be used to adjust hormone levels and ratio within the plant tissues for the desired results (col. 7, lines 1-4). An effective amount of auxin can control internode length, top growth, flower set, increasing fruit size and/or fruit yield. The addition of cytokinin and GA with the auxin may affect the level or effectiveness of plant growth and productivity (col. 6, lines 52-62). Stoller et al teach that auxin is applied at an effective amount to produce a desired effect and include GA and cytokinin (col. 15, lines 54-67).
Routine optimization of the plant hormones ratio or wt.% by weight would have been adjusted to the amount of cytokinin and GA as taught by Zhang et al where the amount of cytokinin is about 3-9 wt.% by weight and amount of GA is about 30-40 wt.% by weight. The person of ordinary skill in the art would have found it obvious to optimize the plant hormone levels because Stoller et al taught that depending on the condition of the plant another plant hormone may be applied to counter act the conditions of the plant. For example, auxin moves into root tissues usually in small amounts but too much auxin in the roots may be harmful. The high amount of auxin can be controlled by adding cytokinin to counteract the increase (col. 14, lines 9-41). GA usually increase IAA oxidase and can control cell growth (col. 17, lines 34-37). Low cytokinin to auxin ratio will favor root development (col. 9, lines 27-30).
Additionally, Applicants are reminded that as stated in claim 5, the word “comprising” is understood to be open-ended suggesting unknown components that are included in the procedure. “Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim. See MPEP 2111.03.
Conclusion
No claims are allowed.
Correspondence
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/June Hwu/
Primary Examiner, Art Unit 1661