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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/15/2025 has been entered.
Status of the Claims
Claims 1, 3-12, 15-16 are pending.
Claims 1, 3-12, 15-16 are examined herein.
The rejection to Claims 1, 4-12 under 35 U.S.C. 103 as being unpatentable over Kamilova, et al. (Environmental Microbiology 7.11 (2005): 1809-1817) in view of Thijs et al. (Plant and soil 385.1 (2014): 15-36) is withdrawn in view of Applicant’s amendments of the claims.
The rejection to Claim 16 under 35 U.S.C. 103 as being unpatentable over Kamilova, et al. (Environmental Microbiology 7.11 (2005): 1809-1817) in view of Thijs et al. (Plant and soil 385.1 (2014): 15-36). as applied to claims 1, 4-5, 7-9 and 12 above, and further in view of Shehata, et al. "Relevance of in vitro agar based screens to characterize the anti-fungal activities of bacterial endophyte communities." BMC microbiology 16.1 (2016): 1-7 is withdrawn in view of Applicant’s amendments of the claims.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites in part: “which enriches the functional microbiomes by selecting for organisms with one or more than one specific beneficial trait and wherein the functional microbiome identified in step (c) is subjected to a series of sequential or parallel selection steps in a liquid selection medium, with each selection step selecting for the same or a further additional beneficial trait” The claims should be amended to recite “with each selection step selecting for the same traits or a further additional beneficial trait”
Claim 1 appears to be missing an enumerated step after step (c) and before step (d). The step appears to be: “wherein the functional microbiome identified in step (c) is subjected to a series of sequential or parallel selection steps in a liquid selection medium, with each selection step selecting for the same or a further additional beneficial trait, so that the constructed functional microbiome has one or multiple beneficial traits, and wherein the functional microbiome is not subjected to a purification step of plating onto solid agar between selection steps”. This should be step (d) and step (d) should be relabeled as step (e).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-12, 15-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
This is a new rejection made in view of Applicant’s amendments of the claims.
Amended Claim 1 recites in part: “which enriches the functional microbiomes by selecting for organisms with one or more than one specific beneficial trait and wherein the functional microbiome identified in step (c).”
No functional microbiome is “identified” in step (c). Step (c) recites: “culturing any microorganisms present in the liquid medium of step (b) in a liquid selection medium”. The limitation “which enriches the functional microbiomes by selecting for organisms with one or more than one specific beneficial trait and wherein the functional microbiome identified in step (c)” therefore lacks antecedent basis. For purposes of examination, the limitation is reasonably interpreted to mean “wherein the microorganisms cultured in step (c). This interpretation does not relieve Applicant of the duty to amend the claims to address the cited deficiency.
Claim 1 also recites “the functional microbiome”. The amended claim is generally unclear as to when the “functional microbiome” appears. It is unclear if the functional microbiome is the material that is originally collected, if it is the material after one round of growth in the selective media or if it appears at some point thereafter. The claim should be amended to clarify when the functional microbiome that is plated out in step (d) (for example) appears. As such the metes and bounds of the claim are unclear.
Claim 15 similarly recites “A method to impart beneficial traits to a plant or groups of plants, or to soil or to bioremediation comprising administering to the plant, or groups of plants, or to soil a microbiome produced by the method of claim 1.” It is unclear if the functional microbiome is the material that is originally collected, if it is the material after one round of growth in the selective media or if it appears at some point thereafter. It is unclear if step (d) of Claim 1 is required for production of the functional microbiome or if step (d) is involved with production of a functional microbiome at all. As such the metes and bounds of the claim are unclear.
Claims that depend from a claim that is rejected as indefinite, without clarifying the cited deficiency, are rejected as a virtue of their dependency.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-12, 15-16 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim1 recites in part:
c) culturing any microorganisms present in the liquid medium of step (b) in a liquid selection medium selected from:
1. Nitrogen free combined carbon broth;
2. Nitrogen free Dworkin and Foster broth supplemented with tryptamine, indole- 3-acetamide and indole-3-acetonitrile;
3. Nitrogen free Dworkin and Foster broth supplemented with 1-amino-i- cyclopropane carboxylate;
4. National Botanical Research Institute phosphate growth media;
5. Carbon free Dworkin and Foster broth supplemented with abscisic acid;
6. Gluconate media supplemented with one or more of lead, cadmium, nickel,zinc, copper, cobalt, or mercury;
7. Nutrient broth containing 6% NaCl;
8. Nutrient broth with pH 4 or pH 9;9. Carbon free Dworkin and Foster broth supplemented with any organic pollutant;10. Nitrogen free Dworkin and Foster broth supplemented with any organic pollutant; or 11. Phosphate free National Botanical Research Institute phosphate growth media supplemented with any organic pollutant;
which enriches the functional microbiomes by selecting for organisms with more than one specific beneficial trait.
The claim has been amended to recite specific selective media and some of the media types do not appear to select for more than one trait (for example Nutrient broth containing 6% NaCl). As such, selecting for more than one trait with said media does not appear to be enabled.
Conclusion
No claims are allowed.
The claims as amended appear to be free of the prior art. The closest prior art appears to be Kamilova, et al. (Environmental Microbiology 7.11 (2005): 1809-1817, the disclosures and teachings of which have been set forth in detail in the file. However, Kamilova does not disclose, teach or otherwise render obvious in view of the prior art combining the method disclosed by Kamilova with the recited selection media.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES A LOGSDON whose telephone number is (571)270-0282. The examiner can normally be reached M-F 8:30 - 5:00 pm.
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/CHARLES LOGSDON/Primary Examiner, Art Unit 1662
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