DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner’s Note
In view of the Appeal Brief filed on 01/12/2026 and the Supplemental Appeal Brief filed on 01/22/2026, PROSECUTION IS HEREBY REOPENED, for the reasons set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/BRATISLAV STANKOVIC/ Supervisory Patent Examiner, Art Units 1661 & 1662
Status of Claims
Claims 1, 7, 11, 15, 22, 27, 73-74, 78, 80, 82, 93, 99-100, 105-106, 143 and 220 are pending.
Claims 7, 78, 80, 82 and 105-106 are withdrawn.
Claims 1, 11, 15, 22, 27, 73-74, 93, 99-100, 143 and 220 are examined.
Withdrawn Rejections
The rejection of claims 1, 11, 15, 22, 27, 73-74, 93, 99-100, 143 and 220 under 35 USC 112(b) is withdrawn in light of amendments made by Applicant.
The rejection of claims 1, 11, 15, 22, 27, 73-74, 93, 99-100, 143 and 220 under 35 USC 112(a) for failing to comply with the written description requirement is withdrawn in light of amendments made by Applicant.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 11, 15, 22, 27, 73-74, 93, 99-100, 143 and 220 are rejected under 35 U.S.C. 103 as being obvious over Thompson (US20200170258) in view of Ashraf (Ashraf and Foolad. Environmental and Experimental Botany. 59(2):206-216. 2007).
The applied reference has a common inventor and assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claim 1 is drawn to a composition comprising a flagellin and a betaine wherein the flagellin comprises an amino acid sequence with a length of 8-53 residues comprising SEQ ID NO: 603, i.e., the consensus sequence of SEQ ID NO: 591-602 which comprises X1-1-N-X2-A-X3-D-D. Claim 1 is drawn to the amino acid sequence comprising any of nine sequences: SEQ ID NO: 291-292, 295-298, 536, 538, 582 or 583 and an inducer compound comprising a betaine and:
• X1 is arginine (R), glutamine (Q), or lysine (K);
• X2 is serine (S), asparagine (N), glycine (G), arginine (R), or threonine (T);
• And X3 is serine (S), glycine (G), alanine (A) or lysine (K),
• wherein when X3 is serine (S) an amino acid sequence having SEQ ID NO: 591-593, 595, 596 or 601 or having at least 95% identity to SEQ ID NO: 226-229, 231-234, 236- 240, 243-246, 248, 250-256, 258-259, 261, 263, 265-270, 272-280, 282, 283, 285, 286, 288, 289, 290, 293, 294, 299, 300, 572-579, or 581 is a part of the 8-53 amino acid sequence of the polypeptide,
• when X3 is glycine (G) an amino acid sequence having SEQ ID NO: 600 or 602 or having at least 95% identity to SEQ ID NO: 580, 584 or 585 is a part of the 8-53 amino acid sequence of the polypeptide,
• when X3 is alanine (A) an amino acid sequence having SEQ ID NO: 594 or 598 or having at least 95% identity to SEQ ID NO: 291, 292, 295-298,536, 538, 582, or 583 is a part of the 8-53 amino acid sequence of the polypeptide, or
• when X3 is lysine (K) an amino acid sequence having SEQ ID NO: 597, 590 or 599 or having at least 95% identity to SEQ ID NO: 526, 528, 530, 532,534, 540 or 571 is a part of the 8-53 amino acid sequence of the polypeptide.
Claim 11 is drawn to a method of applying the composition of claim 1 to a plant.
An embodiment of claims 15 and 73-74 is that the flagellin is modified chemically on its N or C terminus.
An embodiment of claim 22 and a requirement of 27 is that the composition of claim 14 has SEQ ID NO: 226.
An embodiment of claim 100 is the betaine of claim 99 is glycine betaine.
An embodiment of claim 143 is the composition of claim 1 further comprising an herbicide.
Claim 220 requires a seed coated with the composition of claim 1.
Regarding claims 1, 22 and 27, Thompson teaches a polypeptide for bioactive priming of a plant wherein the peptide comprises a flagellin with an amino acid sequence of SEQ ID NO: 226 and additional sequences including all of the sequences instantly claimed (claim 1 of reference). It is noted that the sequences of Thompson and the instant application share the same identifiers. Thompson teaches the polypeptide in a composition (claim 12 of reference). Regarding claim 11, Thompson teaches a method for applying the polypeptide to a plant (claim 33). Regarding claim 15, Thompson teaches the polypeptide is from a Bacillus, a Lysinibacillus, a Paenibacillus, or an Aneurinbacillus genus bacterium (claim 5 of reference). Regarding claims 15 and 73-74, Thompson teaches the polypeptide comprises a modification including to the N-terminal or C-terminal. Regarding claim 143, Thompson teaches the composition comprises a pesticide (claim 29 of reference). Regarding claim 220, Thompson teaches a seed coated with the composition (claim 32 of reference).
Regarding claims 93 and 99-100 Thompson does not teach including an inducer in the composition.
Ashraf teaches that glycine betaine is an osmoprotectant which can be applied exogenously to plants to increase stress tolerance and crop production (paragraph bridging left and right columns of page 207).
It would have been obvious to modify the composition of Thompson by including glycine betaine because it was known that applying glycine betaine to plants increases stress tolerance of plants and their crop productivity. Therefore, including glycine betaine in the composition of Thompson was an obvious variation. One of ordinary skill in the art would have expected that applying the composition of Thompson with the addition of glycine betaine would have improved the plant’s stress tolerance and crop output.
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, 11, 15, 22, 27, 73-74, 93, 99-100, 143 and 220 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-50 of U.S. Patent No. 12599649 (PG Pub US20100214456; it is noted that a Notice of Allowance was mailed 11/19/2025 but the patent has not been published as the present Office action) in view of Ashraf (Ashraf and Foolad. Environmental and Experimental Botany. 59(2):206-216. 2007).
Claim 1 is drawn to a composition comprising a flagellin and a betaine wherein the flagellin comprises an amino acid sequence with a length of 8-53 residues comprising SEQ ID NO: 603, i.e., the consensus sequence of SEQ ID NO: 591-602 which comprises X1-1-N-X2-A-X3-D-D. Claim 1 is drawn to the amino acid sequence comprising any of nine sequences: SEQ ID NO: 291-292, 295-298, 536, 538, 582 or 583 and an inducer compound comprising a betaine and:
• X1 is arginine (R), glutamine (Q), or lysine (K);
• X2 is serine (S), asparagine (N), glycine (G), arginine (R), or threonine (T);
• And X3 is serine (S), glycine (G), alanine (A) or lysine (K),
• wherein when X3 is serine (S) an amino acid sequence having SEQ ID NO: 591-593, 595, 596 or 601 or having at least 95% identity to SEQ ID NO: 226-229, 231-234, 236- 240, 243-246, 248, 250-256, 258-259, 261, 263, 265-270, 272-280, 282, 283, 285, 286, 288, 289, 290, 293, 294, 299, 300, 572-579, or 581 is a part of the 8-53 amino acid sequence of the polypeptide,
• when X3 is glycine (G) an amino acid sequence having SEQ ID NO: 600 or 602 or having at least 95% identity to SEQ ID NO: 580, 584 or 585 is a part of the 8-53 amino acid sequence of the polypeptide,
• when X3 is alanine (A) an amino acid sequence having SEQ ID NO: 594 or 598 or having at least 95% identity to SEQ ID NO: 291, 292, 295-298,536, 538, 582, or 583 is a part of the 8-53 amino acid sequence of the polypeptide, or
• when X3 is lysine (K) an amino acid sequence having SEQ ID NO: 597, 590 or 599 or having at least 95% identity to SEQ ID NO: 526, 528, 530, 532,534, 540 or 571 is a part of the 8-53 amino acid sequence of the polypeptide.
Claim 11 is drawn to a method of applying the composition of claim 1 to a plant.
An embodiment of claims 15 and 73-74 is that the flagellin is modified chemically on its N or C terminus.
An embodiment of claim 22 and a requirement of 27 is that the composition of claim 14 has SEQ ID NO: 226.
An embodiment of claim 100 is the betaine of claim 99 is glycine betaine.
An embodiment of claim 143 is the composition of claim 1 further comprising an herbicide.
Claim 220 requires a seed coated with the composition of claim 1.
Regarding claims 1, 22 and 27, Thompson teaches a polypeptide for bioactive priming of a plant wherein the peptide comprises a flagellin with an amino acid sequence of SEQ ID NO: 226 and additional sequences including all of the sequences instantly claimed (claim 1 of reference). It is noted that the sequences of Thompson and the instant application share the same identifiers. Thompson teaches the polypeptide in a composition (claim 12 of reference). Regarding claim 11, Thompson teaches a method for applying the polypeptide to a plant (claim 33). Regarding claim 15, Thompson teaches the polypeptide is from a Bacillus, a Lysinibacillus, a Paenibacillus, or an Aneurinbacillus genus bacterium (claim 5 of reference). Regarding claims 15 and 73-74, Thompson teaches the polypeptide comprises a modification including to the N-terminal or C-terminal. Regarding claim 143, Thompson teaches the composition comprises a pesticide (claim 29 of reference). Regarding claim 220, Thompson teaches a seed coated with the composition (claim 32 of reference).
Regarding claims 93 and 99-100 Thompson does not teach including an inducer in the composition.
Ashraf teaches that glycine betaine is an osmoprotectant which can be applied exogenously to plants to increase stress tolerance and crop production (paragraph bridging left and right columns of page 207).
It would have been obvious to modify the composition of Thompson by including glycine betaine because it was known that applying glycine betaine to plants increases stress tolerance of plants and their crop productivity. Therefore, including glycine betaine in the composition of Thompson was an obvious variation. One of ordinary skill in the art would have expected that applying the composition of Thompson with the addition of glycine betaine would have improved the plant’s stress tolerance and crop output.
Conclusion
Claims 1, 11, 15, 22, 27, 73-74, 93, 99-100, 143 and 220 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R BYRNES whose telephone number is (571)270-3935. The examiner can normally be reached 9:00 - 5:00 M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bratislav Stankovic can be reached at (571) 270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID R BYRNES/Examiner, Art Unit 1662
Prosecution Insights