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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/04/2026 has been entered.
Status of Claims
Claims 1, 4, 5, 8-10, 18-44, 46 and 49 as amended on 9/04/2026 are currently pending.
Claims 1, 4, 5, 8-10, 18, 22-27, 44 and 49, as drawn to a method of treating a host species (“plant”) with a claimed product, are under examination in the instant prosecution and in the instant office action. The elected host species is a plant (or treatment of a plant), the election was made in response filed on 4/22/2022.
Claims 19-21, 28-43 and 46 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions (Groups III-VIII) and nonelected species (animals), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/22/2022.
In response to the office action, please, cancel non-elected, withdrawn and non-examined claims 19-21, 28-43 and 46 and delete non-elected subject matter (phrase “animal host”) from claims 1 and 49.
Claim Rejections - 35 USC § 103
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, 4-5, 8-10, 18, 22-27, 44 and 49 as amended are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015/011166 (Gortz et al) in view of Seo et al (Plant Cell Physiol. 2012, 53 (8), pages 1432-1444), Golawska et al (J Pest Sci., 2012, 87, pages 173-180), US 7,201,926 (Fried et al), Ren Guangxi et al (Journal of Plant Science. 2009, 4(2), pages 43-48, abstract only) and Mcpartland et al (New Zealand Journal of Crop and Horticultural Science, 2011, 29, pages 301-307).
The cited document WO 2015/011166 (Gortz et al) teaches a method for preventing and/or treating plant infection and increasing plant resistance to damage caused by pathogens, wherein the method comprises administering to a plant or treating a plant by compositions comprising: 1) a biological control agent that is non-pathogenic bacteria including Bacillus subtilis strain QST 713 (page 66) and 2) plant beneficial or “activating” agent including naturally occurring compounds or non-synthetic fungicides (page 1, page 67), wherein components are provided alone or in a combination (entire document including abstract, pages 66-67, table A on page 67). The cited WO 2015/011166 (Gortz et al) clearly acknowledges a synergistic effect of a combination of the Bacillus subtilis strain QST 713 with beneficial or “activating” agent in protecting plant from infection ( see page 66, line 20). The cited WO 2015/011166 (Gortz et al) clearly recognizes, teaches and suggests that the use of synthetic antimicrobials or fungicides should be excluded in order to avoid selection and reemergence of antimicrobial resistant plant pathogenic microorganisms (page 1, lines 15-22).
In particular, the WO 2015/011166 (Gortz et al) discloses that use of quinoline compounds (page 1, lines 1-8) as beneficial or “activating” agent. The WO 2015/011166 (Gortz et al) also teaches the use of plant extract, proteins and/or metabolites as additional active agents to be used in combination with bacterial strain (page 6, lines 1-8; page 17, lines 23-35; page 18, lines 3-7).
But the cited document WO 2015/011166 (Gortz et al) is silent about the use of specific antimicrobial and plant beneficial agents that are sclareol, naringin, nootkatone, steviol glycoside and cannabidiol.
However, the sclareol, naringin, nootkatone, steviol glycoside and cannabidiol have been known and used in the prior art as plant beneficial and plant protecting agents.
For example: the cited reference by Seo et al teaches that sclareol when applied to the plants inhibits plant diseases caused by soil borne bacterial pathogens (see abstract).
For example: the cited reference by Golawska et al teaches that naringenin is useful for plant pest management (abstract).
For example: the cited US 7,201,926 (Fried et al) teaches that nootkatone is useful as a pest repellent and plant pest management agent (col. 8, line 42).
For example: the cited reference by Ren Guangxi et al teaches that steviol glycoside promotes plant seed germination and plant growth (see abstract).
For example: the cited reference by Mcpartland et al teaches that Cannabis and its extracts (cannabidiol) act as a nematicide and can be used on nematode sensitive plants (page 305, col.1, last 2 par.)
Therefore, it would have been obvious to one having ordinary skill in the art at the time the claimed invention was filed to use various plant beneficial or plant activating agents in combination with plant beneficial non-pathogenic bacteria including Bacillus including Bacillus subtilis strain QST 713 in the method for plant protection of WO 2015/011166 (Gortz et al) with a reasonable expectation of success because various plant beneficial agents including claim-recited sclareol, naringin, nootkatone, steviol glycoside and cannabidiol have been known and used in the prior art as plant beneficial and plant protecting agents. One of skill in the art would have been motivated to use claim-recited naturally occurring compounds because the cited WO 2015/011166 (Gortz et al) teaches and suggests that the use of synthetic compounds should be excluded in order to avoid selection and reemergence of antimicrobial resistant plant pathogenic microorganisms.
Thus, the claimed invention as a whole was clearly prima facie obvious, especially in the absence of evidence to the contrary.
Further, as applied to claims 8-10: in the cited method the plants are treated with beneficial bacteria and activating agent either alone or in combination and at about the same time (see example A, table A on page 67).
As applied to claims 22-27: in the cited method the plants are treated by foliar spray (page 39, line 13; page 66, line 13), or by seed coating (page 40, line 5; page 44, line 20); plant beneficial compositions are provided as granules (page 39, line 22; page 40, line 31) with slow-release polymers (page 41, lines 22-24).
Thus, the claimed subject matter fails to patentably distinguish over the state art as represented be the cited references. Therefore, the claims are properly rejected under 35 USC § 103.
Double Patenting
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, 4, 5, 8-10, 16-18, 22-27, 44 and 49 as amended are/remain provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over currently pending claims 1, 3, 5-9, 11, 12-15 of co-pending Application 17/286,946.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to compositions and to a method for treating plants by application of composition(s) comprising: 1) a non-pathogenic bacteria including Bacillus subtilis strain QST 713 (see instant claim 1, 4, 5; see co-pending claims 1, 3, 9 and 12); and 2) an “activating” agent that is plant beneficial or “anti-inflammatory” agent including the sclareol, naringin, nootkatone, steviol glycoside, and cannabidiol (see instant claim 1; see co-pending claims 1, 5, 9, 11, 12).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed on 9/04/2026 have been fully considered but they are not all found persuasive.
The claim rejection in view of teaching by CN 105724463 (Liu et al) and CN 105018398 (Zhang et al) has been withdrawn because amended claims do longer recite the use of Aster tataricus and Cyperus rotundus as activating agents.
With regard to claim rejection under 35 USC § 103 Applicants appear to argue that the cited prior art references do not recognize that the claimed ingredients including sclareol, naringin, nootkatone, steviol glycoside and cannabidiol are “activating agents” that are capable to enhance the beneficial effect of non-pathogenic bacteria on plant in order to provide for teaching or suggestion for one of skill in the art to incorporate them into composition in the method for plant protection of WO 2015/011166 (Gortz et al).
First, this argument is not found persuasive because neither claims nor specification indicate any specific “activating” mechanism of action of the claim-recited ingredients beyond a generic mechanism of “activating” effect in addition to bacterial effects on plant protection from infection.
Secondly, the cited WO 2015/011166 (Gortz et al) acknowledges a “synergistic” effect when a combination of the Bacillus subtilis strain QST 713 with additional beneficial (or “activating”) agent is used for protecting plant from infections (see page 66, line 20). Although the particular additional agents are not the same as recited in the pending claims, the cited prior art teaches and suggests to use the additional beneficial agents (proteins or metabolites, including plant extracts) in a combination with a biocontrol bacterial strain to provide for “synergistic” or “activating” effect.
All cited secondary references clearly teach all claim-recited compounds as plant beneficial active ingredients. For example: Seo explicitly states that sclareol inhibit plant diseases (see abstract). Golawska et al explicitly states that naringenin is detrimental to pests that infect plants (abstract).The cited US 7,201,926 (Fried et al) teaches that nootkatone is known agent to protect plants and it is a known plant pest management agent (col. 8, line 42). See other references as explained above.
The cited references are in the same field of endeavor and seek to solve the same problems as the instant application and claims, and one of skill in the art is free to select components available in the prior art, In re Winslow, 151 USPQ 48 (CCPA, 1966).Thus, the claimed subject matter fails to patentably distinguish over the state art as represented be the cited references. Therefore, the claims are properly rejected under 35 USC § 103.
Some of applicants arguments appear to be drawn to the unexpected results that claim-recited compounds capable to activate non-pathogenic bacteria in the context of plant protection. But Applicants do not point out to any specific disclosure or showing in the as-filed specification to support the arguments.
However, it is well established that the scope of the showing must be commensurate with the scope of claims. In the instant case, the only bacteria tested in a combination with the other claim-recited ingredients is Bacillus subtilis (tables II, IIa), wherein the tested Bacillus subtilis is a specific strain QST 713 obtained from commercial product Serenade (published application par. 0068-0069, 0074, par. 0115). But the pending claims (except claim 5) recites a variety of bacterial species but not the specific strain for which unexpected effects were obtained. Further, the synergistic effects appear to be obtained when all 5 claim-recited agents were used in combination with Bacillus subtilis strain QST 713 for inhibiting plant pathogens; for example: table IIa treatment 11, par. 0128.
The evidence necessary to overcome a prima facie case of obviousness must not only be clear and convincing, but must also be commensurate in scope with the claimed subject matter. Thus, any combination for which synergism is not clearly established would be properly rejected because non-obviousness would not have been established.
No arguments were presented with regard to DP rejection.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VERA AFREMOVA whose telephone number is (571)272-0914. The examiner can normally be reached Monday-Friday: 8.30am-5pm EST.
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Vera Afremova
September 11, 2026
/VERA AFREMOVA/ Primary Examiner, Art Unit 1653
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