`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`www.mspto.gov
`
`APPLICATION NO.
`
`
`
` F ING DATE
`
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONF {MATION NO.
`
`13/525,500
`
`06/18/2012
`
`Norman Richard KNOWLES
`
`03170018BA
`
`1472
`
`30743
`
`7590
`
`07/17/2014
`
`WHITHAM,CURTIS &CHRIST0FPERSON&COOK,RC
`11491 SUNSET HILLS ROAD
`SUITE 340
`RESTON, VA 20190
`
`HIRT, ERIN E
`
`1616
`
`MAIL DATE
`
`07/17/2014
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL—90A (Rev. 04/07)
`
`1,4 GROUP, INC.
`Exhibit 1018
`
`Page 0001
`
`1,4 GROUP, INC.
`Exhibit 1018
`Page 0001
`
`

`

`
`
`United Statea Parent: and Trademark Qffiiiee‘
`
`Under Secretary of Commerce for Intellectual Property an d.
`[Ii-rector ufthe United States Patent and Trademark flffice
`
`P.0..Bux1alfil]
`.
`.
`Alexandria, 1In’irg Mia-223134450
`'
`' vmv.usptn~.gnv
`
`WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C.
`11491 SUNSET HILLS ROAD
`SUITE 340
`RESTON, VA 20190
`
`2014-007763
`Appeal No:
`Application: 13/525,500
`Appellant:
`Norman Richard KNOWLES et a1.
`
`Patent Trial and Appeal Board Docketing Notice
`
`Application 13/525,500 was received from the Technology Center at the Board on June 30, 2014
`and has been assigned Appeal No: 2014-007763.
`
`In all future communications regarding this appeal, please include both the application number
`and the appeal number.
`
`The mailing address for the Board is:
`
`PATENT TRIAL and APPEAL BOARD
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`
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`
`Telephone inquiries can be made by calling 571-272-9797 and referencing the appeal number
`listed above.
`
`By order of the Patent Trial and Appeal Board.
`
`ED
`
`1,4 GROUP, INC.
`Exhibit 1018
`
`Page 0002
`
`1,4 GROUP, INC.
`Exhibit 1018
`Page 0002
`
`

`

`PTOISBISZ (07-09)
`Approved for use through 011311‘2013. OMB 0551-0031
`US. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995. no aersons are required to res-0nd to a collection of information unless it disda 5 a valid OMB control number.
`D k
`N
`b
`i.
`I
`REQUEST FOR ORAL HEARING
`”C m ”m “(0" W)
`BEFORE
`THE PATENT TRIAL AND APPEAL BOARD
`
`031 70018BA
`
`in re Appiicatlon of
`
`transmitted to the USPTO, EFS-Web transmitted to the usero, or
`deposited with the United States Postal Service as first class mail
`with sufficient postage in an envelope addressed to "Commissioner
`for Patents. P. o. Box 1450. Alexandria VA 22313-1450"
`[37 CFR 1.5{a)] on
`
`,
`
`Application Number
`
`Knowles
`Filed
`
`13/525,500
`J one 1 8 201 2
`v
`
`For n:- 0! ca to En gimme mam.“ K-tnnus mt sum", .mt Sunnis-tr m tnCT utpmue. Mimi- m tum Swain: mom-n tut...
`A t U 1
`E
`.
`Signature
`-
`r m
`xamtner
`_
`
`Lyra?! m prmmd 1 61 6W
`
` I hereby certify that this correspondence is being facsimile
`
`Applicant hereby requests an oral hearing before the Patent Trial and Appeal Board in the appeal of the above-identified
`application.
`
`The fee for this Request for Oral Hearing is (37 CFR 41.20(b)(3))
`
`$.fl_..___m_._
`
`Appiicant claims small entity status. See 37 CFR 1.27. Therefore. the fee shown above is reduced
`by haif. and the resulting fee is:
`
`5 650
`
`A check in the amount of the fee is enclosed.
`
`Payment by credit card. Form PTO-2038 is attached
`
`The Director has already been authorized to charge fees in this application to .3 Deposit Account.
`l have enclosed a duplicate copy of this sheet.
`
`The Director is hereby authorized to charge any fees which may be required, or credit any overpayment
`to Deposit Account No.
`502041
`
`Payment made via EFS-Web.
`
`A petition for an extension of time under 37 CFR 1.135(b) (PTOISBIZ3) is enclosed.
`For extensions of time in reexamination proceedings, see 3? CFR 1.550.
`WARNING: Information on this form may become public. Credit card information should not
`be inctuded on this form. Provide credit card information and authorization on PTO-
`.
`
`I am the
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`[3 applicant
`
`attorney or agent of record.
`[El Registration number_
`
`32,635
`
`.
`
`D attorney or agent acting under 37 CFR1.34.
`Registration number if acting under 37 CFR 1.34.
`
`_ Signature‘
`
`Michaei E. Whitham
`Typed or printed name
`
`June 17. 2014
`
`Date
`
`703-787—9400
`Telephone number
`
`NOTE: This form must be signed in accordance with 37 CFR 1.33. See 37 CFR 1.4101“ signature requirements and certifications.
`Submit multiple forms if more than one signature is required, see below*.
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`This coilection of information is required by 37 CFR 41.2 0(b){3}. The inlemtation is required to obtain or retain a benefit by the public which is to file (and by the
`USPTO to process) an application. Confidentiality is governed by 35 USC. 122 and 3? Ct-‘R 1.11. 1.14 and 41.6. This collection is estimated to take 12 minutes
`to complete. including gathering. preparing, and submitting the completed apptication form to the USPTO. Time will vary depending upon the individuat case. Any
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`______
`
`.._.
`
`._
`
`1,4 GROUP, INC.
`Exhibit'1018'
`
`Page 0003
`
`1,4 GROUP, INC.
`Exhibit 1018
`Page 0003
`
`

`

`Docket: 0317001 SBA
`
`S.N. 13/525,500
`
`1
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In re patent application of
`
`Knowles
`
`Serial No. 13/525,500
`
`Filed June 18, 2012
`
`Confirmation No. 1472
`
`Group Art Unit 1616
`
`Examiner Hirt
`
`For USE OF C3 TO C14 ALTPHATIC ALDEHYDES, KETONES AND PREVIARY
`AND SECONDARY C3 TO C7 ALIPHATIC ALCOHOLS TO INHIBIT
`SPROUTING OF POTATO TUBERS
`
`Commissioner for Patents
`PO Box 1450
`
`Alexandria, Virginia 22313—1450
`
`APPELLANT’S REPLY BRIEF UNDER 37 C.F.R. §41.41
`
`This reply briefis in furtherance ofthe Notice of Appeal, filed in this case on
`
`September 18, 2013, and in response to the Examiner’s Answer mailed May 1, 2014.
`
`In the Examiner’s Answer, the Examiner makes reference to the following
`
`principle “A recitation of the intended use of the claimed invention must result in a
`
`structural difference between the claimed invention and the prior art in order to
`
`patentably distinguish the claimed invention from the prior. If the prior art structure
`
`is capable of performing the intended use, then it meets the claim”. While the
`
`undersigned has not issue with this guiding principle, the undersigned notes that it is
`
`wholly inapplicable to what is being claimed and what is at issue in this appeal.
`
`The independent claims at issue in this appeal are drawn to compositions. The
`
`undersigned has reproduced the claims below with highlighting so that the unique
`
`features of the claimed invention can be discerned easily from the prior art.
`
`26. A composition for inhibiting sprouting of potato tubers, said composition
`
`comprising
`
`three or more of:
`
`a) one or more C3 to C14 saturated aliphatic aldehydes;
`
`1,4 GROUP, INC.
`
`Exhibit 1018____
`”Page” 0004
`
`1,4 GROUP, INC.
`Exhibit 1018
`Page 0004
`
`

`

`Decket: 0317001 SBA
`
`S.N. 13/525,500
`
`2
`
`b) one or more C3 to C14 saturated aliphatic ketones;
`
`c) one or more C3 to C7 unsaturated aliphatic primary alcohols; and
`
`d) one or more C3 to C7 unsaturated aliphatic secondary alcohols.
`
`32. A composition for inhibiting sprouting of potato tubers comprising decanai and
`
`one or more compounds selected from the group consisting of:
`
`a) one or more C3 to C14 saturated aliphatic aldehydes that are not decanal;
`
`b) one or more C3 to C14 saturated aliphatic ketones;
`
`0) one or more C3 to C7 unsaturated aliphatic primary alcohols; and
`
`(1) one or more C3 to C7 unsaturated aliphatic secondary alcohols.
`
`36. A composition for inhibiting sprouting of potato tubers, said composition
`
`comprising 3-decen-2-one and 2—deeanone.
`
`Key to claim 26 is the requirement offing chemicals from a) to d). This
`
`means that the claimed composition mu_st have one or more C3 to C14 saturated
`
`aliphatic aidehydes or one or more saturated aliphatic ketones. That is, if the
`
`composition has c) and d), it must have one of a) or b) to fit the claim.
`
`Key to ciaim 32, is that the composition must have decanal in combination
`
`with one or more of a)—d).
`
`Key to claim 36 is that the composition must have 3-decenul—0ne and
`
`2-decanone.
`
`These compositions are demonstrated in the patent specification to inhibit
`
`potato tuber sprouting, which is a highly important preperty for long term storage and
`
`shipping of this valuable commodity.
`
`In the rejection, the Examiner has cobbled together no less than six (6)
`
`references in rejecting the claims. That is, claims 26-40 were rejected as being
`
`obvious over US. Patent Publication 2004/0053787 to Knowles, Bradow (J.
`
`Chemical Ecoiogy, 1990, 16(3) 645—666), Rein (US. Patent 3,853,532), Young (U.S.
`
`Patent 3,159,476) further in View of(Olson (W02007/O44200) and Findley (U.S.
`
`1,4 GROUP, INC.
`...EXhibi11018 .
`Page 0005
`
`.
`
`.....
`
`1,4 GROUP, INC.
`Exhibit 1018
`Page 0005
`
`

`

`Docket: 03 17001 SBA
`
`S.N. 13/525,500
`
`3
`
`Patent 3,852,057). The Findley reference was not separately treated in the appeal
`
`brief, and will be addressed here as not showing anything more than the other
`
`references of record, and not making a combination of all references obvious to one of
`
`ordinary skill in the art.
`
`In making the rejection, the Examiner has not provided sound reasoning for
`
`making the combinations, i.e., one of ordinal)! skill in the art would not make the
`
`combinations proposed as there is no expectation of success that the combinations
`
`would produce a composition that inhibits potato tuber sprouting or that the
`
`compositions would be made for any other reason (e. g., an application not related to
`
`potato tuber sprouting).
`
`First, it should be noted that not all ofthe references have anything to do with
`
`potato tuber sprouting. Bradow is focused on seed germination (identified as a pre—
`
`growth/pre—harvest activity; unlike potato tuber Sprouting which is a post harvest
`
`activity). Rein is focused sucker growth in tobacco plants using a non-volatile
`
`formulatio including 2—dodecanone and 2-undecanone. Findley is focused on
`
`controlling growth of axillary shoots in tobacco plants with hydroxy ethers. Thus, it
`
`should be clear that any or all of these three references do not show or suggest
`
`teachings that would be combined with potato tuber sprouting compositions, as they
`
`show no effect whatsoever on potato tuber sprouting.
`
`Conversely, the teachings of Knowles, Young and Olson do not Show
`
`materials which have any effect on seed germination (Bradow) or tobacco plants
`
`(Rein and Findley).
`
`In fact, Rein teaches that C7 alcohols (which are Specifically a
`
`possibility in claims 26 and 32 ofthe present application) were inactive (see column
`
`2, lines 34-35 Thus, there would be no reason to combine materials from Knowles,
`
`Young and Olson with materials of Bradow, Rein and Findley.
`
`Second, even if the combinations were made, the combinations would not
`
`yield or make obvious the claimed invention.
`
`Starting with claim 36, no combination of references would make the
`
`combination 0f3-decenew2-one and 2—decanone obvious to one of ordinary skill in the
`art.
`
`1,4 GROUP, INC.
`,
`- Exhibit-1018
`
`Page 0006
`
`1,4 GROUP, INC.
`Exhibit 1018
`Page 0006
`
`

`

`Docket: 031700} SBA
`
`S.N. 13/525,500
`
`4
`
`Knowies, a patent made by the inVentors of the present application, teaches cc,
`
`[3 Esaturated aliphatic aldehydes and ketcnes being used for suppressing potato tuber
`
`sprouting. Knowles does not teach that a saturated aliphatic ketone has any activity
`
`on sprouting whatsoever, and does not teach the inclusion of a saturated aliphatic
`
`ketone such as 2—decanone for any reason. Bradow teaches aldehydes and ketones in
`
`seed germination appiications, but does not mention 2—decanone. Reins discussed
`
`aliphatic monoketones, include 2 decanone, being used to inhibit sucker development
`
`in tobacco plants, but did not teach that 3-decene-2—one could also be used to inhibit
`
`sucker deveIOpment in tobacco plants (in fact its requirement of saturated aliphatic
`
`hydrocarbon monoketones teaches against this), and did not teach any appiication to
`
`potato tuber sprouts. Young teaches the use of 8 carbon isooclyl alcohols for
`
`inhibiting tuber sprouts. Isooctyl alcohols are not staturated aliphatic ketones like 2—
`
`decaonone. Olson teaches the use ofniists, fogs, and sprays in inhibiting potato
`
`sprouting, but does not teach anything related to using a saturated ketone or 2~
`
`decanone in paticular. Findley teaches the use ofhydroxy ethers for controlling
`
`axillary shoots in tobacco piants (see abstract), and does not teach the use of aliphatic
`
`ketones like 2—decanone for any reason. Hence, one of ordinary skiil in the art would
`
`not have any reason to combine any or all ofthe references to come up with a
`
`combination of 3—decene—2—one and 2~decanone, as is claimed in claim 36, whether it
`
`be for controlling potato tuber sprouting or tobacco shoot growth.
`
`Moving on to ciaim 32, no combination of references would make the use of
`
`decanal (an unsaturated aliphatic aldehyde) in combination with saturated aliphatic
`
`aldehydcs or ketones or unsaturated C3 to C7 primary and secondary alcohols obvious
`
`to one of ordinary skill in the art.
`
`As noted above, Knowles teaches a, B Msaiurated aliphatic aldehydes and
`
`ketones being used for suppressing potato tuber sprouting, and does not teach that
`
`saturated aliphatic aldehydes, such as, decanal, have any utility whatsoever. Bradow
`
`teaches aldehydes and ketones in seed germination applications, but does not mention
`
`decanal. Reins discussed aliphatic inonoketones being used to inhibit sucker
`
`development in tobacco plants. Reins does not teach the use of unsaturated aldehydes
`
`1,4 GROUP, INC.
`. Exhibit .1018
`
`.
`
`Page 0007
`
`1,4 GROUP, INC.
`Exhibit 1018
`Page 0007
`
`

`

`Docket: 0317001 SBA
`
`S.N. 13/525,500
`
`5
`
`such as decanal being used for any purpose. Young teaches the use of 8 carbon
`
`isooctyl alcohols for inhibiting tuber sprouts. Isooctyl alcohols are not saturated
`
`aliphatic aldehydes like decanal, and, by definition, are not C3 to C7 alcohols. Olson
`
`teaches the use of mists, fogs, and sprays in inhibiting potato sprouting, but does not
`
`teach anything related to using a saturated aldehyde or decanal in paticular. Findley
`
`teaches the use ofhydroxy ethers for controlling axillary shoots in tobacco plants (see
`
`abstract), and does not teach the use of aliphatic aldehydes like decanal, or
`
`unsaturated C3 to C7 alcohols, for any reason. Hence, one of ordinary skill in the art
`
`would not have any reason to combine any or all of the references to come up with a
`
`combination of decanal, and either or all of C3-Cl4 saturated aldehydes or ketones
`
`and C3-C7 unsaturated primary and secondary alcohols, as is claimed in claim 32,
`
`whether it be for controlling potato tuber sprouting or tobacco shoot growth.
`
`Finally, with reference to claim 26, only the applicants have identified a utility
`
`for a) one or more C3 to C14 saturated aliphatic aldehydes and b) one or more C3 to
`
`C14 saturated aliphatic ketones in suppressing potato tuber sprouting. Rein is the
`
`only reference that mentions a saturated ketone having any utility for anything—that is,
`
`Rein teaches saturated 2 ketones being used for suppressing sucker growth on tobacco
`
`plants. However, Rein does not teach combining such compounds with other
`
`compounds such as saturated aldehydes or C3 to C7 unsaturated alcohois. And no
`
`references teach that saturated aidehydes or C3 to C7 unsaturated alcohols would have
`
`any utility in suppressing tobacco sucker growth. Hence, no combination of
`
`references would make a combination offing; of a), b), c), and d) obvious to one of
`
`ordinary skill in the art.
`
`As mentioned above, Knowles teaches at, [3 gasaturated aliphatic aldehydes
`
`and ketones being used for suppressing potato tuber sprouting, and does not teach that
`
`saturated aliphatic aldehydes or ketones have any utility whatsoever. Bradow
`
`teaches aldehydes and ketones in seed germination applications, but does not mention
`
`saturated aliphatic aldehyde-s or ketones in particular, and does not mention the
`
`possible utility of C3 - C7 unsaturated alcohols. As noted above, Reins discussed
`
`aliphatic monoketones being used to inhibit sucker development in tobacco plants.
`
`1,4 GROUP, INC.
`Exhibit 1018 ,
`
`,
`
`Page 0008
`
`1,4 GROUP, INC.
`Exhibit 1018
`Page 0008
`
`

`

`Docket: 03170018BA
`
`S.N. 13/525,500
`
`6
`
`Reins does not teach such materials being used in combination with C3 to C7
`
`unsaturated alcohols, or that C3 to C7 unsaturated alcohols would have any utility
`
`whatsoever. Young teaches the use of 8 carbon isooctyl alcohols for inhibiting tuber
`
`sprouts. Isooctyl alcohols are not saturated aliphatic aldehydes like decanal, and, by
`
`definition, are not C3 to C7 alcohols. Olson teaches the use ofrnists, fogs, and sprays
`
`in inhibiting potato Sprouting, but does not teach anything related to using a saturated
`
`aldehydes or ketones, or unsaturated primary and Secondary alcohols in particular.
`
`Findley teaches the use of liydroxy etliers for controlling axillary shoots in tobacco
`
`plants (sce abstract), and does not teach the use of aliphatic aldehydes or ketones or
`
`unsaturated C3 to C7 alcohols for any reason. Hence, one of ordinary skill in the art
`
`would not have any reason to combine any or all of the references to come up with a
`
`combination of decanal, and either or all of C3—C14 saturated aldehydes or ketones
`
`and C3-C7 unsaturated primary and secondary alcohols, as is claimed in claim 26,
`
`whether it be for controlling potato tuber sprouting or tobacco shoot growth.
`
`Reconsideration and reversal of the Examiner’s rej ction is in order.
`
`Respectful]
`
`sub ii ed,
`
`/% |
`
`chael 13. Whitham
`
`Reg. No. 32,635
`
`Whitham, Curtis, Christofferson & Cook, P.C.
`11491 Sunset Hills Road, Suite 340
`Reston, VA 20190
`
`Tel. {703) 787-9400
`
`Fax. (703) 787-7557
`
`Customer No. 30743
`
`1,4 GROUP, INC.
`....Exhibit 1018
`
`Page 0009
`
`1,4 GROUP, INC.
`Exhibit 1018
`Page 0009
`
`

`

`Electronic Patent Application Fee Transmittal
`
`Title of Invention:
`
`USE OF C3 TO C14 ALIPHATIC ALDEHYDES, KETONES AND PRIMARY AND
`SECONDARY C3 TO C7 ALIPHATIC ALCOHOLS TO INHIBIT SPROUTING OF
`POTATO TUBERS
`
`
`
`_—
`
`Utility under 35 USC 1 1 1 (a) Filing Fees
`
`Description
`
`Fee Code
`
`Quantity
`
`Sub-Total in
`
`USD($)
`
`_ P
`
`atent-Appeals-and-lnterference:
`
`Post-Al|owance-and-Post-lssuance:
`
`Extension-of—Time:
`
`1,4 GROUP, INC.
`Exhibit 1018
`
`Page 0010
`
`1,4 GROUP, INC.
`Exhibit 1018
`Page 0010
`
`

`

`Miscellaneous:
`
`Total in USD (5)
`
`1,4 GROUP, INC.
`Exhibit 1018
`
`Page 0011
`
`1,4 GROUP, INC.
`Exhibit 1018
`Page 0011
`
`

`

`Title of Invention:
`
`USE OF C3 TO C14 ALIPHATIC ALDEHYDES, KETONES AND PRIMARY AND
`SECONDARY C3 TO C7 ALIPHATIC ALCOHOLS TO INHIBIT SPROUTING OF
`POTATO TUBERS
`
`Electronic Acknowledgement Receipt
`
`“—
`
`——
`
`
`
`——
`——
`
`Payment information:
`
`Submitted with Payment
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`yes
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`RAM confirmation Number
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`9749
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`502041
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`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows: Charge any Additional Fees required under 37 C.F.R. Section 1.16 (National application filing, search, and examination fees)
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`Charge any Additional Fees required under 37 C.F.R. Section 1.17 (Patent application and reexamination EuécfifigllfisINC-
`
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`
`Page 0012
`
`1,4 GROUP, INC.
`Exhibit 1018
`Page 0012
`
`

`

`Charge any Additional Fees required under 37 C.F.R. Section 1.19 (Document supply fees)
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`Request for Oral Hearing
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`03170018ba_oralhearing.pdf
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`e2e828f3d182c8c31578e40d2e05d4713cc
`416eb
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`
`Reply Brief Filed
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`03170018ba_replybrief.pdf
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`161568
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`5300892bf6ae2e3d506d92d596fae9e099c
`4e406
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`Fee Worksheet (SB06)
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`fee-info.pdf
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`d5f28b57a9783d4ea036e390f46fe13fcdee
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`National Stage of an International Application under 35 U.S.C. 371
`lfa timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International Application Filed with the USPTO as a Receiving Office
`lfa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and ofthe International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`1,4 GROUP, INC.
`Exhibit 1018
`
`Page 0013
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`1,4 GROUP, INC.
`Exhibit 1018
`Page 0013
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`

`

`Electronic Patent Application Fee Transmittal
`
`
`
`_ P
`
`atent-Appeals-and-lnterference:
`
`Appeal Forwarding Fee
`
`2413
`
`1000
`
`1000
`
`Post-Al|owance-and-Post-lssuance:
`
`Extension-of—Time:
`
`1,4 GROUP, INC.
`Exhibit 1018
`
`Page 0014
`
`Title of Invention:
`
`USE OF C3 TO C14 ALIPHATIC ALDEHYDES, KETONES AND PRIMARY AND
`SECONDARY C3 TO C7 ALIPHATIC ALCOHOLS TO INHIBIT SPROUTING OF
`POTATO TUBERS
`
`_—
`
`Utility under 35 USC 1 1 1 (a) Filing Fees
`
`Description
`
`Fee Code
`
`Quantity
`
`Sub-Total in
`
`USD($)
`
`1,4 GROUP, INC.
`Exhibit 1018
`Page 0014
`
`

`

`Miscellaneous:
`
`Total in USD (5)
`
`_
`
`Sub-Total in
`
`1,4 GROUP, INC.
`Exhibit 1018
`
`Page 0015
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`1,4 GROUP, INC.
`Exhibit 1018
`Page 0015
`
`

`

`Title of Invention:
`
`USE OF C3 TO C14 ALIPHATIC ALDEHYDES, KETONES AND PRIMARY AND
`SECONDARY C3 TO C7 ALIPHATIC ALCOHOLS TO INHIBIT SPROUTING OF
`POTATO TUBERS
`
`Electronic Acknowledgement Receipt
`
`“—
`
`——
`
`
`
`——
`——
`
`Payment information:
`
`Submitted with Payment
`
`yes
`
`RAM confirmation Number
`
`Deposit Account
`
`11785
`
`502041
`
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows: Charge any Additional Fees required under 37 C.F.R. Section 1.16 (National application filing, search, and examination fees)
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.17 (Patent application and reexamination EuécfifigllfisINC-
`
`
`
`Page 0016
`
`1,4 GROUP, INC.
`Exhibit 1018
`Page 0016
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`

`

`Charge any Additional Fees required under 37 C.F.R. Section 1.19 (Document supply fees)
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.20 (Post Issuance fees)
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`Charge any Additional Fees required under 37 C. F. R. Section 1. 21 (Miscellaneous fees and charges)
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`File Listing:
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`Document
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`.
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`.
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`Multi
`
`Pages
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`Fee Worksheet (SB06)
`
`fee-info.pdf
`
`cl 66fdc9c2021 d7ad8d48724l ab5d47cl a9
`ad8ed
`
`
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO ofthe indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`lfa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)—(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`lfa timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International Application Filed with the USPTO as a Receiving Office
`lfa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and ofthe International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`1,4 GROUP, INC.
`Exhibit 1018
`
`Page 0017
`
`1,4 GROUP, INC.
`Exhibit 1018
`Page 0017
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313- 1450
`www.mspto.gov
`
`APPLICATION NO.
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONF {MATION NO.
`
`13/525,500
`
`06/18/2012
`
`Norman Richard KNOWLES
`
`03170018BA
`
`1472
`
`30743
`
`7590
`
`05/01/2014
`
`WHITHAM, cums &CHRISTOFFERSON&COOK, p.c.
`1 1491 SUNSET HILLS ROAD
`SUITE 340
`RESTON, VA 20190
`
`HIRT, ERIN E
`
`1616
`
`MAIL DATE
`
`05/01/2014
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL—90A (Rev. 04/07)
`
`1,4 GROUP, INC.
`Exhibit 1018
`
`Page 0018
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`1,4 GROUP, INC.
`Exhibit 1018
`Page 0018
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`

`

`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Application Number: 13/525500
`Filing Date: 06/18/2012
`Appellant(s): Knowles et al.
`
`Witham, Curtis, Christofferson & Cook, PC.
`For Appellant
`
`EXAMINER’S ANSWER
`
`1,4 GROUP, INC.
`Exhibit 1018
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`Page 0019
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`1,4 GROUP, INC.
`Exhibit 1018
`Page 0019
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`

`

`Application/Control Number: 13/525,500
`
`Page 2
`
`Art Unit: 1616
`
`This is in response to the appeal brief filed 13 December 2013.
`
`(1) Grounds of Rejection to be Reviewed on Appeal
`
`Every ground of rejection set forth in the Office action dated May 22, 2013 from
`
`which the appeal is taken is being maintained by the examiner except for the grounds of
`
`rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.” New
`
`grounds of rejection (if any) are provided under the subheading “NEW GROUNDS OF
`
`REJECTION.”
`
`a) Statement of Grounds of Rejection Not Modified
`
`The ground(s) of rejection set forth in the Office action dated May 22, 2013, from
`
`which the appeal is taken, have not been modified.
`
`(2) Response to Argument
`
`Claims 26-40 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Knowles et al. (US2004/0053787), Bradow et al. (J. Chemical Ecology, 1990, 16(3),
`
`645-666), Rein et al. (US 3,853,532), Young (US 3,159,476), and further in view of
`
`Olson et al. (WO2007/044200, with priority to 11/413090 filed 2006) and Findley et al.
`
`(us 3,852,057).
`
`1,4 GROUP, INC.
`Exhibit 1018
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`Page 0020
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`1,4 GROUP, INC.
`Exhibit 1018
`Page 0020
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`

`

`Application/Control Number: 13/525,500
`
`Page 3
`
`Art Unit: 1616
`
`Applicant's arguments filed December 13, 2013 in their Appeal Brief with respect
`
`to the rejection of claims 26-40 under 35 USC §103 as being unpatentable over
`
`Knowles, Bradow, Rein, Young, and further in view of Olson and Findley have been fully
`
`considered but were not persuasive.
`
`Applicants argue that the examiner has failed to recognize that the inventors
`
`have discovered that the breakdown products, metabolites of alpha, beta unsaturated
`
`ketones and aldehydes are useful as sprout inhibitors. The examiner also respectfully
`
`points out that applicants have not solely claimed saturated aliphatic ketones, as
`
`applicant's composition calls for the inclusion of 3-decen-2-one which is an unsaturated
`
`ketone which is homologous to the trans-3-nonen-2-one that is disclosed and taught by
`
`Knowles, as well as the instantly claimed medium and long chain alcohols, which would
`
`include both saturated and unsaturated carbon chains (medium chain alcohols being
`
`~C3-C7) as well as secondary and primary alcohols. Knowles teaches that these
`
`alcohols are capable of inhibiting sprouting and as such would include applicant’s
`
`preferred trans-2-hepten-1-ol and trans-2-hexen-1-ol. Knowles further teaches wherein
`
`the actives are formulated to deliver the actives at a rate of 0.1 -5 mmol/kg of potato
`
`tubers, and that trans-2-decenal is an aldehyde useful for inhibiting sprouting in potato
`
`tubers. The examiner notes that while trans-2-decenal is not homologous to decenal it is
`
`a closely related compound.
`
`The examiner respectfully points out that she never stated that Knowles taught
`
`decenal specifically or 2-decanone. However, these deficiencies in Knowles were
`
`addressed by Rein, Bradow, Young. Rein teaches that aliphatic (saturated and
`
`1,4 GROUP, INC.
`Exhibit 1018
`
`Page 0021
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`1,4 GROUP, INC.
`Exhibit 1018
`Page 0021
`
`

`

`Application/Control Number: 13/525,500
`
`Page 4
`
`Art Unit: 1616
`
`unsaturated) monoketones (C4 to C18) are useful for inhibiting axillary growth in
`
`tobacco plants via spray application. Rein further teaches wherein the most preferred
`
`compounds are 2—ketones, specifically 2-decanone, 2-undecanone, and 2—nonanone
`
`(see table in column 8). Applicants argue that Rein because Rein is directed tobacco
`
`plants it is not appropriate prior art for use in rejecting the instant claims. The examiner
`
`respectfully disagrees and reminds applicants that, “A recitation of the intended use of
`
`the claimed invention must result in a structural difference between the claimed
`
`invention and the prior art in order to patentably distinguish the claimed invention from
`
`the prior art.” If the prior art structure is capable of performing the intended use, then it
`
`meets the claim. In this case, Rein also teaches that fatty/long chain alcohols (08-01 2)
`
`were useful for controlling growth in tobacco plants and these compounds were already
`
`known in the art to be useful for controlling the sprouting of potato tubers as is taught by
`
`Knowles. Therefore, the examiner maintains that it would have been obvious to an
`
`ordinary skilled artisan to at the very least try these 2—ketones for use in inhibiting
`
`sprouting of potato tubers because other compounds known for controlling axillary
`
`tobacco shoot growth were known to inhibit potato tuber sprouting.
`
`Regarding Bradow, applicants argue that it is directed to the
`
`germination/sprouting of seeds and this is not the same thing as sprouting of potato
`
`tubers. Again the examiner respectfully points and again reminds applicants that, “A
`
`recitation of the intended use of the claimed invention must result in a structural
`
`difference between the claimed invention and the prior art in order to patentably
`
`distinguish the claimed invention from the prior art.” If the prior art structure is capable
`
`1,4 GROUP, INC.
`Exhibit 1018
`
`Page 0022
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`1,4 GROUP, INC.
`Exhibit 1018
`Page 0022
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`

`

`Application/Control Number: 13/525,500
`
`Page 5
`
`Art Unit: 1616
`
`of performing the intended use, then it meets the claim. In the instant case, Bradow
`
`teaches that aliphatic aldehydes, ketones, and alcohols are useful as sprouting
`
`inhibitors for seeds, specifically Bradow teaches that nonanal, which is homologous to
`
`the instantly preferred decanal), and previously disclosed (by Knowles) unsaturated
`
`aldehyde ((E)-2-hexenal) are useful for inhibiting sprouting in seeds/plants. Therefore,
`
`the examiner maintains that it would have been obvious to an ordinary skilled artisan to
`
`at the very least try these nonanal and t