US 20090062126A1
`
`(19) United States
`(12) Patent Application Publication (10) Pub. No.: US 2009/0062126 A1
`Knowles et al.
`(43) Pub. Date:
`Mar. 5, 2009
`
`
`(54) USE OF C3 TO C14 ALIPHATIC ALDEHYDES,
`
`(22)
`
`Filed:
`
`Aug. 6, 2008
`
`KETONES AND PRIMARY AND SECONDARY
`C3 TO C7 ALIPHATIC ALCOHOLS TO
`
`Related U_S_ Application Data
`
`INHIBIT SPROUTING 0F POTATO TUBERS
`
`(76)
`
`Inventors:
`
`Norman Richard Knowles,
`Pullman, WA (US); Lisa O’Rear
`Knowles, Pullman, WA (US)
`
`Correspondence Address:
`351(1):??? CURTIS & CHRISTOFFERSON &
`11491 SUNSET HILLS ROAD, SUITE 340
`RESTON: VA 20190 (US)
`
`(21) Appl. No.:
`
`12/186,861
`
`3000
`
`(60)
`
`Il’govziggnal application No. 60/955,156, filed on Aug.
`Publication Classification
`
`(51)
`
`Int Cl
`A01N '35/02
`(2006 01)
`A01N 31/02
`(200601)
`G01N 33/64
`(2006.01)
`G01N 33/98
`(2006.01)
`A 01p 21/00
`(2006.01)
`(52) US. Cl. .......... 504/348; 504/353; 436/128; 436/131
`(57)
`ABSTRACT
`Compositions and methods for inhibiting the sprouting of
`potato tubers are provided. The compositions comprise C3 to
`C14 aliphatic aldehydes and ketones, and/or C3 to C7 pri-
`mary and secondary aliphatic alcohols.
`
`2500
`
`2000
`
`.4; 01 C)O
`
`1000
`
`500
`
`freshwt)
`
`
`TuberResidue(ng/g
`
`+ 2-nonanone
`
`—V— 2-nonanol
`—l—~ 3~nonen-2—one
`
`-5
`
`0
`
`5
`
`10
`
`15
`
`20
`
`25
`
`30
`
`Days after application
`
`1,4 GROUP, INC.
`1,4 GROUP, INC.
`Exhibit 1006
`Exhibit 1006
`Page 0001
`Page 0001
`
`

`

`Patent Application Publication
`
`Mar. 5, 2009 Sheet 1 0f 4
`
`US 2009/0062126 A1
`
`Figure1
`
`(D
`
`COC(
`
`UC0 gN
`
`—I-—3-nonen-2-0ne
`
`—‘F—2-nonanol
`
`
`
`
`
`Daysafterapplication
`
`3000
`
`2500
`
`1500
`
`2000
`1000
`(W LISGJJ B/Bu) anpgseg JeqnJ.
`
`500
`
`1,4 GROUP, INC.
`1,4 GROUP, INC.
`Exhibit 1006
`Exhibit 1006
`Page 0002
`Page 0002
`
`

`

`Patent Application Publication
`
`Mar. 5, 2009 Sheet 2 0f 4
`
`US 2009/0062126 A1
`
`Figure2
`
`6I
`‘—
`
`I C Q
`
`)COCI
`
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`
`1-nonanol+t-2—nonenal
`—-I—-—
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`
`
`
`
`
`Daysafterapplication
`
`1600
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`1400
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`1200
`
`1000
`
`800
`
`400
`
`400
`
`200
`
`(MA use-u; B/Bu) enpgsaa JeqnJ.
`
`1,4 GROUP, INC.
`1,4 GROUP, INC.
`Exhibit 1006
`Exhibit 1006
`Page 0003
`Page 0003
`
`

`

`Patent Application Publication
`
`Mar. 5, 2009 Sheet 3 0f 4
`
`US 2009/0062126 A1
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`1,4 GROUP, INC.
`1,4 GROUP, INC.
`Exhibit 1006
`Exhibit 1006
`Page 0004
`Page 0004
`
`

`

`Patent Application Publication
`
`Mar. 5, 2009 Sheet 4 of 4
`
`US 2009/0062126 A1
`
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`1,4 GROUP, INC.
`1,4 GROUP, INC.
`Exhibit 1006
`Exhibit 1006
`Page 0005
`Page 0005
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`

`

`US 2009/0062126 A1
`
`Mar. 5, 2009
`
`USE OF C3 TO C14 ALIPHATIC ALDEHYDES,
`KETONES AND PRIMARY AND SECONDARY
`C3 TO C7 ALIPHATIC ALCOHOLS TO
`INHIBIT SPROUTING OF POTATO TUBERS
`
`CROSS-REFERENCE TO RELATED
`APPLICATIONS
`
`[0001] This application claims benefit of US. provisional
`patent application 60/955,156, filed Aug. 10, 2007, the com-
`plete contents of which is hereby incorporated by reference.
`
`BACKGROUND OF THE INVENTION
`
`1. Field of the Invention
`[0002]
`[0003] The invention generally relates to using C3 to C14
`aliphatic aldehydes and ketones, and C3 to C7 aliphatic pri-
`mary and secondary alcohols to inhibit sprouting when
`applied to potato tubers.
`[0004]
`2. Background of the Invention
`[0005]
`Following harvest, potato tubers undergo a natural
`period of dormancy during which sprout growth is inhibited
`by endogenous hormones. As tubers emerge from dormancy
`and begin to sprout, respiration increases, starch is catabo-
`lized to sugars, and weight loss increases. The result is a
`decrease in quality oftubers destined for fresh and processing
`markets. Hence, inhibition of sprouting through chemical or
`physical means preserves quality and prolongs the duration of
`storage.
`[0006] The sprout inhibitors registered for use on potatoes
`in the United States are CIPC (also known as chlorpropham,
`Sprout Nip®, etc.), maleic hydrazide (MH), DMN (also
`known as dimethylnaphthalene, 1,4SIGHT®, 1,4SEED®,
`1,4SHIP®), DIPN (diisopropylnaphthalene, Amplify®), and
`clove oil (Biox-C®; Sprout TorchTM). Except for MH, which
`is applied pre-harvest to actively growing plants, all inhibitors
`are applied post harvest when tubers are in the storage bin.
`[0007] CIPC is the most effective and most widely used
`potato sprout inhibitor. The chemical is most often applied as
`a thermal aerosol fog into potato storages after wound-heal-
`ing and prior to sprouting. In the Pacific Northwest, this is
`usually in November or December, before dormancy has
`ended. The chemical is fogged into storage at the recom-
`mended rate of 1 lb chlorpropham/600 cwt. One gallon of
`CIPC aerosol grade will treat 4200 cwt (210 tons) ofpotatoes.
`CIPC can inhibit sprouting and extend the storage life of
`table-stock and processing potatoes for up to 1 year with two
`applications.
`[0008] CIPC is an effective sprout suppressant that has
`been used in the potato industry for about 40 years and the
`EPA considers it as a group E chemical (non-carcinogenic).
`CIPC was originally registered in the United States as a pre-
`and post-emergence herbicide in 1962 and the EPA has set
`residue limits for potato tubers. Notwithstanding its safety
`record, the trend today is to reduce the use of synthetic pes-
`ticides in agriculture in order to reduce residues in the world’s
`food supply. The chemical is continually being scrutinized by
`the EPA as it is among the three pesticides found in the highest
`concentrations in the average American diet (Gartrell, M. J .,
`J. C. Craun, D. S. Podrebarac, and E. L. Gunderson. 1986.
`Pesticides, selected elements, and other chemicals in adult
`total diet samples October 1980-March 1982. J. Assoc. Off.
`Anal. Chem. 69:146-161). CIPC constitutes over 90% of the
`total synthetic residues found in US. potatoes (Gartrell et al.,
`1986). The EPA recently issued a re-registration eligibility
`
`decision for CIPC and dropped the tolerance level for resi-
`dues on potatoes. The economic importance of this chemical
`as a sprout inhibitor to the potato industry is illustrated by the
`fact that the registrants spent over $6,000,000 in this re-
`registration process. While other potential sprout suppres-
`sants have been identified (e. g. aromatic aldehydes and alco-
`hols, methylesters ofrape oil, carvone, jasmonates, spearmint
`and peppermint oils), none appear as effective as CIPC. A
`need thus exists to identify and develop the most benign
`chemicals possible (ideally natural, phytochemicals) that are
`effective as sprout inhibitors.
`[0009]
`1,4SIGHT® (94.7% DMN:1,4-dimethylnaphtha-
`lene) is one such natural chemical that is also registered for
`sprout control, but it tends to be less effective than CIPC.
`DMN is naturally produced in potatoes. It is more volatile
`than CIPC and thus dissipates from tubers more rapidly than
`CIPC. Multiple applications ofDMN are required to maintain
`season-long sprout inhibition. DMN is vaporized and applied
`as an aerosol into bulk storages. It can be applied any time
`after tubers are placed in the bin but is usually applied later in
`the fall or early winter when sprouting potential begins to
`increase. DMN is registered for use at a rate of 1 lb DMN/500
`cwt (:20 ppm on a DMN to potato weight basis). Because of
`the need for multiple applications of DMN to achieve pro-
`longed inhibition of sprouting, DMN is more costly to use
`than CIPC.
`
`[0010] Other natural volatile sprout inhibitors have been
`identified. Carvone (derived from caraway seed) is commer-
`cially available for use on potatoes in the Netherlands (Hart-
`mans, K. J., P. Diepenhorst, W. Bakker and L. G. M. Gorris.
`1995. The use of carvone in agricultureisprout suppression
`of potatoes and antifungal activity against potato-tuber and
`other plant-diseases. Industrial Crops and Products 423-13).
`The following US patents describe the use of various com-
`pounds for the inhibition ofpotato sprout formation: US. Pat.
`No. 5,436,226 to Lulai, et al. (Jul. 25, 1995) describes the use
`ofjasmonates; US. Pat. No. 5,580,596 to Winkelmann et al.
`(Dec. 3, 1996) describes the use of rape oil and certain long-
`chain alcohols, either alone or in combination; US. Pat. No.
`5,139,562 to Vaughn et al., (Aug. 16, 1992) describes the use
`of volatile monoterpenes (e. g. from eucalyptus, peppermint,
`spearmint, etc.), and US. Pat. No. 5,129,951 to Vaughn et al.,
`(Jul. 14, 1992) describes the use of aromatic aldehydes and
`alcohols. In addition, Vokou et al. (1993) have demonstrated
`that the essential oils from a multitude of herbs (e. g. sage and
`rosemary) possess sprout inhibiting activity in potatoes.
`[0011] There remains an ongoing need to provide altema-
`tive sprout inhibitors that are safe and effective, particularly
`sprout inhibitors that are natural compounds, and that do not
`pose a threat to the environment or to the health of humans
`and other species.
`
`SUMMARY OF THE INVENTION
`
`[0012] A novel method for inhibiting (e.g. preventing, fore-
`stalling, slowing, reversing, or otherwise hindering) the
`development of sprouts in potato tubers is provided. The
`method includes the step of exposing potato tubers to one or
`more C3 to C14 aliphatic aldehydes or ketones, and/or to C3
`to C7 aliphatic primary or secondary alcohols to inhibit
`sprouting ofthe tubers. Examples of such compounds include
`2-nonanone, nonanal, 2-heptanol, and trans-2-hepten-1-ol
`and analogous aliphatic compounds of 3 to 14-carbons in the
`case of aldehydes and ketones, or 3 to 7 carbons in the case of
`primary or secondary alcohols.
`
`1,4 GROUP, INC.
`1,4 GROUP, INC.
`Exhibit 1006
`Exhibit 1006
`Page 0006
`Page 0006
`
`

`

`US 2009/0062126 A1
`
`Mar. 5, 2009
`
`[0020] Aliphatic C3 to C14 aldehydes that may be used in
`the practice of the invention generally have the chemical
`formula
`
`0 C
`
`Rl/ \H
`
`[0021] where R1 is a C2 to C13 branched or unbranched,
`substituted or unsubstituted saturated alkyl or a C2 to C13
`branched or unbranched, substituted or unsubstituted unsat-
`urated alkenyl. In some embodiments of the invention, the
`aldehyde is nonanal,
`
`0 f
`
`l
`VVW \ H
`
`[0013] The compounds may be applied directly to potato
`tubers. Alternatively, the compounds may be derived from the
`breakdown of C3 to C14 (x,[3-unsaturated aldehydes and
`ketones such as those described in US. Pat. No. 6,855,699 to
`Knowles et al. (Feb. 15, 2005). US. Pat. No. 6,855,699
`describes the use of C3 to C14 (x,[3-unsaturated aldehydes and
`ketones, many of which are naturally produced in fruits and
`vegetables, to inhibit the sprouting ofpotato tubers. However,
`it has been discovered that the breakdown products of these
`C3 to C14 (x,[3-unsaturated aldehydes and ketones, including
`the compounds described herein, are also useful for this pur-
`pose.
`
`the invention provides methods for
`In addition,
`[0014]
`detecting the appearance of the metabolites of C3 to C14
`(x,[3-unsaturated aldehydes and ketones in or on potato tubers
`to which they have been applied. Such methods involve mea-
`suring an amount or level of C3 to C14 aliphatic aldehydes or
`ketones, and/or C3 to C14 aliphatic primary or secondary
`alcohols,
`in order to track or monitor the breakdown or
`catabolism of the C3 to C14 (x,[3-unsaturated aldehydes and
`ketones.
`
`BRIEF DESCRIPTION OF THE DRAWINGS
`
`or decanal,
`
`FIG. 1. Levels of 3-nonen-2-one, 2-nonanone, and
`[0015]
`2-nonanol
`in tubers initially treated with 0.75 mmol/kg
`3-nonen-2-one and stored at 9° C. Content of residues in the
`outer 20 mm of tuber.
`
`FIG. 2. Levels of trans-2-nonenal, nonanal, trans -2-
`[0016]
`nonen-1 -ol and 1-nonanol in tubers initially treated with 0.75
`mmol/kg trans-2-nonenal and stored at 9° C. Content of resi-
`dues in the outer 20 mm of tuber.
`
`FIG. 3. Effects of 3-nonen-2-one (3N2) in various
`[0017]
`combinations with 2-nonanone on sprouting of Russet Bur-
`bank tubers. The compounds were applied as described in
`Example 1. Tubers were treated for 24 h, removed from
`treatment chambers, and placed at 22° C. to sprout for 3
`weeks. Sprout fresh weight is expressed as a percentage of
`control (non-treated), which were 100% sprouted.
`[0018]
`FIG. 4. Effect of trans-2-hexen-1-ol, 2-heptanol,
`decanal and 3-decanone on sprouting in Premier Russet
`tubers during long term storage at 9° C. Compounds were
`initially applied 98 days after harvest to tubers which had
`emerged from dormancy and displayed small
`(<3 mm)
`sprouts.
`
`DETAILED DESCRIPTION OF THE PREFERRED
`EMBODIMENTS OF THE INVENTION
`
`[0019] The present invention is based on the discovery that
`C3 to C14 aliphatic aldehydes and ketones, and/or C3 to C7
`aliphatic primary and secondary alcohols, function to inhibit
`the development of potato sprouts. These compounds have
`been identified as metabolites ofthe previously known potato
`tuber sprout inhibitors C3 to C14 (x,[3-unsaturated aldehydes
`and ketones, and have certain advantages in terms of produc-
`tion, use and performance. Many of the compounds offer the
`advantage of being naturally occurring and thus relatively
`safe and nontoxic to use. These compounds may be used
`alone or in combination with each other, or in combination
`with other known tuber sprout inhibitors, pesticides and
`growth regulators.
`
`WVWO'
`
`[0022] Aliphatic C3 to C14 ketones that may be used in the
`practice ofthe invention generally have the chemical formula
`
`where R2 is a C1 to C12 branched or unbranched, substituted
`or unsubstituted saturated alkyl or a C1 to C12 branched or
`unbranched, substituted or unsubstituted unsaturated alkenyl,
`and R3 is a C1 to C12 branched or unbranched, substituted or
`unsubstituted saturated alkyl or a C1 to C12 branched or
`unbranched, substituted or unsubstituted unsaturated alkenyl.
`R2 and R3 may be the same or different. In some embodiments
`of the invention, the ketone is 2-nonanone,
`
`War
`
`3
`
`or 3 -decanone,
`
`W'
`
`1,4 GROUP, INC.
`1,4 GROUP, INC.
`Exhibit 1006
`Exhibit 1006
`Page 0007
`Page 0007
`
`

`

`US 2009/0062126 A1
`
`Mar. 5, 2009
`
`[0023] Aliphatic C3 to C7 primary alcohols that may be
`used in the practice ofthe invention generally have the chemi-
`cal formula
`
`OH
`
`A.
`
`R4
`
`where R4 is a C2 to C6 branched or unbranched, substituted or
`unsubstituted saturated alkyl or a C2 to C6 branched or
`unbranched, substituted or unsubstituted unsaturated alkenyl.
`In various embodiments of the invention, the unsaturated C3
`to C7 primary alcohol is
`[0024]
`l-hexanol,
`
`\/\/\/OH
`
`[0025]
`
`l-heptanol,
`
`/\/\/\/OH
`
`[0026]
`
`trans -2 -hexen-l -ol,
`
`\/\/\/OH °r
`
`[0027]
`
`trans -2 -hepten- 1 -ol,
`
`/\/\/\/0H'
`
`[0028] The aliphatic C3 to C7 secondary alcohols that may
`be used in the practice ofthe present invention generally have
`the chemical formula
`
`where R5 is a C1 to C5 branched or unbranched, substituted or
`unsubstituted saturated alkyl or a C1 to C5 branched or
`unbranched, substituted or unsubstituted unsaturated alkenyl.
`R6 is a C1 to C5 branched or unbranched, substituted or
`unsubstituted saturated alkyl or a C1 to C5 branched or
`unbranched, substituted or unsubstituted unsaturated alkenyl.
`R5 and R6 may be the same or different. In one embodiment of
`the invention, the saturated C3 to C7 secondary alcohol is
`2-heptanol,
`
`OH
`
`W.
`
`[0029] Examples of additional compounds that may be
`used in the practice ofthe invention include but are not limited
`to the following:
`[0030] Aliphatic C3 to C14 aldehydes that may be used in
`the practice of the present invention include but are not lim-
`ited to: propanal, butanal, pentanal, hexanal, heptanal, octa-
`nal, 4-nonenal, 6-nonenal, decanal, undecanal, dodecanal,
`tridecanal, and tetradecanal.
`[0031] Aliphatic C3 to C14 ketones that may be used in the
`practice ofthe present invention include but are not limited to:
`propanone, 2-butanone, 2-pentanone, 2-hexanone, 2-hep-
`tanone, 2-octanone, 3-octanone, 3-nonanone, 2-decanone,
`3-decanone, 2-undecanone, 2-dodecanone, 2-tridecanone,
`and 2-tetradecanone.
`
`[0032] Aliphatic C3 to C7 primary alcohols that may be
`used in the practice of the present invention include but are
`not limited to: l-propanol, l-butanol, 2-buten-l-ol, l-pen-
`tanol, 2-penten-l-ol,
`l-hexanol, 2-hexen-l-ol, and l-hep-
`tanol.
`
`[0033] Aliphatic C3 to C7 secondary alcohols that may be
`used in the practice of the present invention include but are
`not limited to: 2-propanol, 2-butanol, 2-pentanol, and 2-hex-
`anol.
`
`[0034] By “substituted” we mean the replacement of
`hydrogen with a monovalent or divalent radical. Suitable
`substitution groups include but are not
`limited to,
`for
`example, hydroxyl, nitro, amino, imino, cyano, halo, thio,
`thioamido, amidino, imidino, oxo, oxamidino, methoxami-
`dino, guanidino, sulfonamido, carboxyl, formyl, lower alkyl,
`halo-lower alkyl,
`lower alkoxy, halo-lower alkoxy,
`lower
`alkoxyalkyl, alkylcarbonyl, cycloalkyl, heterocycloalkyl,
`alkylthio, aminoalkyl, cyanoalkyl, and the like.
`[0035] The application of sprout inhibiting compounds to
`potato tubers is generally known to those of skill in the art.
`The treatment of potato tubers is described, for example, in
`US. Pat. No. 6,855,669 (Knowles et al.), the complete con-
`tents of which are hereby incorporated by reference. Appli-
`cation is typically to bulk potatoes in storage bins, although
`this need not be the case as the compounds may be applied to
`potatoes stored or sorted in any manner, so long as sufficient
`contact is made between the compounds and the potato tubers
`to inhibit sprouting. Application of the compounds to the
`potatoes may be carried out by any of several methods. Gen-
`erally, the compound(s) will be volatilized, e. g. by cold fog-
`ging, or at high temperature to create a thermal fog, or by
`atomization, and introduced into storage bins e.g. via the
`ventilation system. This introduction may be a discrete event
`that is carried out once or multiple times throughout the
`storage period. Alternatively, a slow-release mechanism or
`formulation may be employed in which the compound gradu-
`ally enters the storage area over a longer period of time, for
`example by evaporation from a source impregnated with the
`compound(s). Further, the compounds may also be advanta-
`geously applied by spraying or misting a liquid form of the
`compound onto the potatoes, or by dipping or otherwise
`coating the potatoes with the compound, either prior to, dur-
`ing, or after the potatoes are stored (e.g. between storage and
`boxing or bagging for commercial purposes). Such com-
`pounds can also be used to coat or impregnate consumer
`containers (such as cardboardboxes, burlap bags, plastic bags
`etc) which typically hold potatoes coming out of storage
`sheds or bins for the express purpose of making available the
`precursor or metabolite compounds to delay sprouting in
`transit and at final destinations (e.g. homes, grocery stores,
`1,4 GROUP, INC.
`1,4 GROUP, INC.
`Exhibit 1006
`Exhibit 1006
`Page 0008
`Page 0008
`
`

`

`US 2009/0062126 A1
`
`Mar. 5, 2009
`
`restaurants and other food establishments). For such applica-
`tions, the compounds may also be mixed with various other
`agents known to facilitate the delivery of gases. liquids, or
`gels as appropriate (e.g. emulsifiers, slow release agents or
`matrices and the like).
`[0036] The timing of exposure of the potatoes to the com-
`pounds of the invention can be prior to or after emergence
`from dormancy.
`[0037] The application of the compounds may be carried
`out only once as described above (i.e. early in the storage of
`the potatoes). Alternatively, depending on the factors such as
`the cultivar, the time of harvest of the potatoes, the length of
`storage of the potatoes, the fate of the potatoes, etc. multiple
`applications of the compounds may be made. For example, if
`the potatoes are to be used as seed potatoes, only one appli-
`cation may be necessary as the eventual sprouting of the
`potatoes will be desirable. However, if the potatoes are to be
`stored long term (e. g. over the entire winter for distribution in
`the spring or the following summer) multiple applications
`may be made. In this case, the first application will generally
`be made early in the storage process (e. g. at between 4 and 32
`weeks following harvest), and subsequent applications may
`also be made at roughly 4 to 12 week intervals as needed, until
`the potatoes are retrieved for use.
`[0038] The amount of compound (or compounds) that is
`applied is sufficient to terminate, slow, prevent, and/or inhibit
`sprout growth on the potato tubers. The development of
`sprouts may thus be prevented altogether, or the onset of
`sprouting may be delayed, or existing sprouts may be killed,
`or the development of sprouts may be slowed compared to
`untreated tubers, etc. In any case, the process of sprouting is,
`in general, inhibited by treating the potato tubers with the
`compounds as described herein, or with their precursor com-
`pounds (e.g. see U.S. Pat. No. 6,855,669, for examples of
`precursor (x,[3-unsaturated aldehydes and ketones which can
`be used to make the ketones and aldehydes and alcohols of
`this invention), in comparison to potato tubers that are not
`exposed to or contacted by the compounds in a similar man-
`ner. In general, such inhibition will result in a decrease in the
`number, length, or fresh weight of sprouts developing on the
`tubers, and/or a decrease in the rate of growth (as determined
`by length, number, and/or weight) of sprouts that develop on
`the treated tubers, in comparison to potato tubers that are not
`exposed to or contacted by the compounds. The decrease will
`be in the range of at least about 10 to 100%, preferably in the
`range of about 50 to 100%, and most preferably in the range
`of about 75 to 100%. Thus, the treated tubers will display a
`decrease in sprout development of about 10, 20, 30, 40, 50,
`60, 70, 80 90, or 100%, compared to untreated tubers.
`[0039] The amount of a compound (or mixture of com-
`pounds) that is used to inhibit sprouting according to the
`invention may vary from situation to situation. However, the
`amount will generally be in the range of from about 0.1
`mmol/kg tuber fresh weight to about 3 .0 mmol/kg tuber fresh
`wt
`
`[0040] According to the present invention, the compounds
`of the invention may be applied directly, or they may arise
`indirectly as metabolites from the application of precursor
`compounds such as, but not limited to, those described herein
`and in U.S. Pat. No. 6,855,669. The compounds ofthe inven-
`tion may also be derived from the application ofa formulation
`of an inactive chemically related species which is released as
`an active form upon application to tubers. Examples of this
`chemistry are an acetal or hemiacetal ofthe active aldehyde or
`
`the ketal or hemiketal of the active ketone. The compounds
`may be applied in combination with other agents used to treat
`potatoes, examples of which include but are not limited to
`other substances that also inhibit sprouting. In this case, the
`use of the compounds of the present invention may allow the
`use of less of another substance whose use is less desirable
`
`is more
`(e.g. a substance that is not naturally occurring,
`expensive, toxic, etc). Such combinations may also allow the
`use of lower doses ofthe compounds ofthe present invention.
`[0041] The preparation of the compounds for use in the
`practice of the present invention is known to those of skill in
`the art. Many of the compounds are commercially available.
`Others may be synthesized by well-known methods. Still
`others may be isolated from natural sources, e.g. from pota-
`toes or other plants in which they are naturally produced, or in
`which their precursors are produced. Alternatively, the com-
`pounds may be produced in plants or other organisms that
`have been genetically engineered to overproduce the com-
`pounds. One advantage ofthe method ofthe present invention
`is that some of the compounds that are used in the method
`may be relatively inexpensive to procure, or can be expected
`to arise from the metabolism of relatively inexpensive 0t,[3-
`unsaturated carbonyls that have been applied to potato tubers,
`and thus may offer an advantage when compared to more
`costly alternatives.
`[0042] The invention includes methods for determining
`whether potato tubers have been previously exposed to C3 to
`C14 (x,[3-unsaturated aldehydes or ketones. The detection of
`prior exposure is important in identifying tubers treated with
`unregistered or illegally applied 0t,[3 unsaturated carbonyls
`that yield metabolites (for example C8-C14 alcohols). Such
`methods generally involve monitoring the conversion of C3
`to C14 (x,[3-unsaturated aldehydes and C4 to C14 (x,[3-unsat-
`urated ketones by detecting metabolites produced by the
`breakdown ofthese sub stances. The precursor compounds for
`which metabolites are of interest include those disclosed in
`
`U.S. Pat. No. 6,855,699. Such breakdown products occur
`regardless of the method of application of the precursor (e.g.
`cold fogging, thermal fogging, direct spray, slow release
`matrices, etc.). The precursors are applied in an amount suf-
`ficient to achieve or generate an inhibitory amount ofmetabo-
`lites.
`
`[0043] Representative precursor C3 to C14 unsaturated ali-
`phatic aldehyde parent molecules may be represented by the
`formula:
`
`R7W0
`
`and the C4 to C14 unsaturated aliphatic ketone parent mol-
`ecules may be represented by the formula
`
`MAXR
`
`9
`
`where R7 is H2 or a branched or unbranched, substituted or
`unsubstituted C1 to C11 lower alkyl, or branched or
`unbranched, substituted or unsubstituted C1 to C11 lower
`alkenyl. R8 is H2 or branched or unbranched, substituted or
`unsubstituted C1 to C10 lower alkyl, or branched or
`1,4 GROUP, INC.
`1,4 GROUP, INC.
`Exhibit 1006
`Exhibit 1006
`Page 0009
`Page 0009
`
`

`

`US 2009/0062126 A1
`
`Mar. 5, 2009
`
`where R5 is a C1 to C12 branched or unbranched, substituted
`or unsubstituted saturated alkyl or a C1 to C12 branched or
`unbranched, substituted or unsubstituted unsaturated alkenyl;
`and R6 is a C1 to C12 branched or unbranched, substituted or
`unsubstituted saturated alkyl or a C1 to C12 branched or
`unbranched, substituted or unsubstituted unsaturated alkenyl.
`R5 and R6 may be the same or different.
`[0049]
`In a preferred embodiment, the metabolites of C3 to
`C14 (x,[3-unsaturated aldehydes include but are not limited to
`the primary alcohols, the aldehydes, and the ot,[3-unsaturated
`primary alcohols having the same carbon number as the par-
`ent compound. For example, trans-2-nonenal is expected to
`be metabolized to nonanal, 1-nonanol and trans-2-nonen—1-
`01.
`
`In other preferred embodiments, the metabolites of
`[0050]
`C4 to C14 (x,[3-unsaturated ketones include but are not limited
`to the saturated ketone or secondary alcohol having the same
`carbon number as the parent compound, and having the
`hydroxyl bound to the (former) carbonyl carbon of the parent
`compound. For example, trans-3 -nonen-2-one is expected to
`be metabolized to 2-nonanone and 2-nonanol.
`
`Preferred methods of detecting these metabolites
`[0051]
`include but are not limited to solvent extraction or solid phase
`microextraction of tuber tissue and analysis of the extract by,
`for example, high performance liquid chromatography-mass
`spectrometry or gas chromatography-mass spectrometry.
`Levels of breakdown products in potato tuber tissue will be
`dependent upon cultivar, length of exposure to the parent
`compound(s), storage time and storage temperature, etc.
`Generally, detection of the presence of one or more of the
`breakdown products at a level in the range of from about 14
`ng/g fresh weight to about 1000 ng/g fresh weight, and pref-
`erably at least about twice the level present in non-treated
`potatoes, is sufficient to establish that potato tubers have
`previously been exposed to C3 to C14 (x,[3-unsaturated alde-
`hydes and ketones. Those of skill in the art will recognize that
`control potatoes are typically potatoes that have not been
`exposed to C3 to C14 (x,[3-unsaturated aldehydes and ketones
`from exogenous sources, but which may naturally contain
`background levels of the metabolites of interest, which do
`occur naturally in potato tubers.
`[0052] The following non-limiting examples serve to fur-
`ther illustrate the practice of the invention.
`
`EXAMPLES
`
`Example 1
`Determination of the Metabolites of 3-nonen—2-one
`
`(3N2) and trans-2-nonenal (T2N)
`
`[0053] The objective of this study was to determine the
`metabolites of 3-nonen-2-one (3N2) and trans-2-nonenal
`(T2N), which are two examples of(x,[3-unsaturated aldehydes
`and ketones that inhibit sprouting in potatoes as described in
`US. Pat. No. 6,855,669. Potato tubers were treated with 3N2
`or T2N (0.75 mmol/kg tuber) for 24 h in a closed chamber.
`The chemicals were volatilized from filter paper inside the
`chamber. The tubers were removed from the treatment cham-
`
`ber and placed at 9° C. for up to 28 days.
`[0054]
`Samples were taken for analysis of residues and
`metabolite identification over the 28-day storage period. FIG.
`1 shows that the tubers metabolized the 3N2 to 2-nonanone
`
`and 2-nonanol. 2-Nonanol was the mo st persistent, maintain-
`ing a 1.2 ppm residue in the outermost 20 mm of tubers
`through 28 days following treatment with 3N2 (FIG. 1).
`1,4 GROUP, INC.
`1,4 GROUP, INC.
`Exhibit 1006
`Exhibit 1006
`Page 0010
`Page 0010
`
`unbranched, substituted or unsubstituted C1 to C10 lower
`alkenyl. R9 is branched or unbranched, substituted or unsub-
`stituted C1 to C11 lower alkyl, or branched or unbranched,
`substituted or unsubstituted C1 to C11 lower alkenyl. Pre-
`ferred aliphatic aldehydes for which breakdown products are
`traced include trans-2-pentenal;
`trans-2-hexenal;
`trans-2-
`heptenal; trans-2-octenal; trans-2-nonenal; trans-2-decenal;
`trans-2-undecenal;
`trans-2-dodecenal;
`trans,
`trans-2,4,
`-nonadienal; and trans-2, cis-6-nonadienal. Preferred ali-
`phatic ketones for which breakdown products are traced
`include trans-3-hepten-2-one, trans-3-octen-2-one, trans-3-
`nonen-2-one, and trans-3-decen-2-one.
`[0044] The breakdown products that are detected by the
`methods ofthe invention include, for example, aliphatic alde-
`hydes having the chemical formula
`
`0 |
`
`|c
`Rl/ \H
`
`[0045] where R1 is a C2 to C13 branched or unbranched,
`substituted or unsubstituted saturated alkyl or a C2 to C13
`branched or unbranched, substituted or unsubstituted unsat-
`urated alkenyl.
`[0046] Ketones that may be detected in the practice of the
`invention generally have the chemical formula
`
`where R2 is a C1 to C12 branched or unbranched, substituted
`or unsubstituted saturated alkyl or a C1 to C12 branched or
`unbranched, substituted or unsubstituted unsaturated alkenyl.
`R3 is a C1 to C12 branched or unbranched, substituted or
`unsubstituted saturated alkyl, or a C1 to C12 branched or
`unbranched, substituted or unsubstituted unsaturated alkenyl.
`R2 and R3 may be the same or different.
`[0047] Aliphatic C3 to C14 primary alcohols that may be
`detected in the practice of the invention generally have the
`chemical formula
`
`OH
`
`AR4
`
`H
`
`where R4 is a C2 to C13 branched or unbranched, substituted
`or unsubstituted saturated alkyl or a C2 to C13 branched or
`unbranched, substituted or unsubstituted unsaturated alkenyl.
`[0048] Aliphatic C3 to C14 secondary alcohols that may be
`detected in the practice of the present invention generally
`have the chemical formula
`
`

`

`US 2009/0062126 A1
`
`Mar. 5, 2009
`
`When tubers were treated similarly with T2N, the metabolites
`were trans-2-nonen-1-ol, nonanal and 1-nonanol (FIG. 2).
`The trends in residue levels were similar to that of3N2 and the
`
`most persistent metabolite was trans-2-nonen-1-ol.
`
`Example 4
`Use of Mixtures of 3N2 and 2-nonanone as Inhibi-
`
`tors of Sprouting of Potato Tubers
`
`Example 2
`
`Use of Nonanal, 1-nonanol, and trans-2-nonen-1-ol
`as Inhibitors of Sprouting of Potato Tubers
`
`[0055] The objective of this study was to determine the
`extent to which nonanal, 1-nonanol, and trans -2 -nonene-1 -ol
`(metabolites of T2N) inhibit sprouting of potato tubers rela-
`tive to T2N. Tubers were treated separately with 0.25, 0.5 and
`0.75 mmol/kg of T2N, nonanal, 1-nonanol, and trans-2-non-
`ene-1-ol for 24 h as described in Example 1. The treated
`tubers were placed at 19° C. and sprout fresh weights were
`measured 21 days after treatment. The percentage inhibition
`of sprouting relative to untreated control tubers is shown in
`Table 1. T2N inhibited sprouting (100%) at all concentra-
`tions. Nonanal and 1-nonanol inhibited sprouting by 13 to
`51%, depending on the compound and the concentration that
`was used.
`
`TABLE 1
`
`Effects of 9-carbon aliphatic aldehydes and primary
`alcohols on sprouting of potato tubers.
`
`Inhibitor
`
`trans-2-nonenal
`nonanal
`l-nonanol
`trans-2-nonen-1-ol
`
`mmol/kg tubers
`0.5
`% Inhibition
`
`100
`32.1
`24.5
`62.8
`
`0.25
`
`